Streetspace, Inc v. Google, Inc. et al

Filing 51

RESPONSE in Opposition re 49 MOTION to Dismiss filed by Streetspace, Inc. (Attachments: # 1 Declaration Trevor Coddington, # 2 Exhibit A, # 3 Proof of Service)(Coddington, Trevor) (kaj).

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1 2 3 4 5 6 7 DOUGLAS E. OLSON (CSB NO. 38649) dougolson@sandiegoiplaw.com JAMES V. FAZIO, III (CSB NO. 183353) jamesfazio@sandiegoiplaw.com TREVOR Q. CODDINGTON, PH.D. (CSB NO. 243042) trevorcoddington@sandiegoiplaw.com SAN DIEGO IP LAW GROUP LLP 12526 High Bluff Drive, Suite 300 San Diego, CA 92130 Telephone: (858) 792-3446 Facsimile: (858) 792-3447 Attorneys for Plaintiff STREETSPACE, INC. 8 9 UNITED STATES DISTRICT COURT 10 SOUTHERN DISTRICT OF CALIFORNIA 11 12 STREETSPACE, INC., a Delaware corporation, 13 Plaintiff, 14 vs. CASE NO. 10-CV-1757-LAB-MDD STREETSPACE INC.’S MEMORANDUM IN OPPOSITION TO DEFENDANTS’ SECOND RULE 12(B)(6) MOTION TO DISMISS 15 16 17 18 19 20 21 22 GOOGLE INC., a Delaware corporation; ADMOB, INC., a Delaware corporation; APPLE INC., a California corporation; QUATTRO WIRELESS, INC., a Delaware corporation; NOKIA CORPORATION, a foreign corporation; NOKIA INC., a Delaware corporation; NAVTEQ CORPORATION, a Delaware corporation; MILLENNIAL MEDIA, INC., a Delaware corporation; JUMPTAP, INC., a Delaware corporation; and DOES 1 through 20, inclusive, Date: Time: Judge: Ctrm: May 9, 2011 11:15 a.m. Hon. Larry A. Burns 9 Defendants. 23 24 25 26 27 28 OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD TABLE OF CONTENTS 1 2 I. Page INTRODUCTION .............................................................................................................. 1 3 II. BACKGROUND ................................................................................................................ 3 4 III. LEGAL STANDARD ......................................................................................................... 4 5 IV. ARGUMENT...................................................................................................................... 5 A. 6 Streetspace Properly States Its Claims for Direct Infringement ................................... 5 1. 7 There Is No Categorical Rule That an Allegation for Direct Patent Infringement Must Name the Accused Product or Service ....................................................... 5 8 2. The Amended Complaint Conforms with Form 18 of the Federal Rules of Civil Procedure .......................................................................................................... 8 9 3. 10 B. 11 Now Is Not the Time for an Element-by-Element Infringement Analysis ......... 10 Streetspace Properly States Its Claims for Indirect Infringement ............................... 10 1. 12 Xpoint and Mallinckrodt Do Not Prohibit an Indirect Infringement Claim from Alleging the Accused’s Knowledge of the Patent-in-Suit Based on His Receipt 13 of the Initial Complaint .................................................................................... 11 14 2. If Streetspace Is Prevented from Stating Its Claims for Indirect Infringement, 15 Defendants Will Effectively Escape Liability for Their Actionable Post-Filing 16 Conduct ........................................................................................................... 12 3. 17 Streetspace’s Factual Allegation Concerning Google’s Patent Database Creates a Reasonable Inference of Google’s Knowledge of the Patent-in-Suit .............. 13 18 V. CONCLUSION................................................................................................................. 15 19 20 21 22 23 24 25 26 27 28 -I- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 2 3 4 TABLE OF AUTHORITIES Page(s) CASES Advanced Analogic Technologies v. Kinetic Technologies, 2009 WL 1974602 (N.D. Cal. 2009) ..................................................................................... 8 6 Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009) ................................................................................................. passim Atwater Partners of Texas LLC v. AT&T, Inc., et al., No. 2-10-cv-00175 (E.D.Tex March 18, 2011 Order) (Ward, J.)........................................ 1, 5 7 Automated Transactions, LLC v. First Niagra Fin. Group, Inc., 2010 U.S. Dist. LEXIS 141275 (W.D.N.Y. 2010) ............................................................... 11 5 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) ..................................................................................................... passim Bender v. Broadcom Corp., 2009 WL 3571286 (N.D. Cal. 2009) ..................................................................................... 6 Bender v. LG Electronics, 2010 WL 889541 (N.D. Cal 2010) ........................................................................................ 7 Broadcom Corp. v. Qualcomm, Inc., 2007 U.S. Dist. LEXIS 86627 (C.D. Cal. 2007) ............................................................ 12, 13 Conley v. Gibson, 355 U.S. 41 (1957)................................................................................................................ 4 Core Brace LLC v. Star Seismic LLC, 566 F.3d 1069 (Fed. Cir. 2009) ............................................................................................. 4 Cybiotronics, Ltd. v. Golden Source Electronics, Ltd., 2001 U.S. Dist. LEXIS 6191 (C.D. Cal. 2001) .............................................................. 12, 13 Elan Microelectronics Corp. v. Apple, Inc., 2009 WL 2972374 (N.D. Cal. 2009) ........................................................................... 5, 8, 13 Gen-Probe v. Amoco, 926 F.Supp. 948 (S.D. Cal. 1996).......................................................................................... 6 Hackford v. Babbitt, 14 F.3d 1457 (10th Cir. 1994) ............................................................................................. 14 Hall v. City of Santa Barbara, 833 F.2d 1270 (9th Cir. 1986) ................................................................................................ 4 HP v. Intergraph, 2003 U.S. Dist. LEXIS 26092 (N.D. Cal. 2003) ................................................................ 6, 7 Mallinckrodt Inc. v. E-Z-Em, Inc., 670 F.Supp.2d 349 (D. Del. Nov. 20, 2009) ................................................................... 10-12 McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir.2007) ....................................................................................... 1, 3-5 Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d 1097 (9th Cir. 2008) ................................................................................................ 4 Minkus Electronic Display Systems v. Micron Systems, 2011 U.S. Dist. LEXIS 26827 (D. Del. Mar. 16, 2011)........................................................ 11 28 -II- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 2 3 Monolithic Power Systems v. O2 Micro International, 476 F.Supp.2d 1143 (N.D. Cal. 2007) ........................................................................... 12, 13 Phonometrics v. Hospitality Franchise Systems, Inc., 203 F.3d 790 (Fed. Cir. 2000) ......................................................................................... 4, 10 5 Prompt Medical Sys., L.P. v. Allscriptsmisys Healthcare Sol., Inc., No. 6:10-cv-71 (E.D.Tex Feb. 11, 2011 Order) (Davis, J.) .................................................... 1 Realtime Data v. Morgan Stanley, 721 F.Supp.2d 538 (E.D. Tex. 2010) ................................................................................. 7, 8 6 Resonance Technology v. Koninklijke Philips Electronics, 2008 WL 4330288 (C.D. Cal. 2008) .................................................................................. 7, 9 4 11 RPost Holdings, Inc. v. Trustifi Corp., 2010 WL 2079743 (C.D. Cal. 2010)...................................................................................... 6 Thompson v. Davis, 295 F.3d 890 (9th Cir. 2002) .................................................................................................. 4 Tune Hunter, Inc. v. Samsung Telecommunications Am., LLC, 2010 WL 1409245 (E.D. Tex. 2010) ................................................................................... 10 Xpoint Technologies v. Microsoft, 2010 WL 3187025 (D. Del. 2010) .............................................................................. 5, 10-12 12 STATUTES 13 35 U.S.C. § 287(a) .................................................................................................................... 12 14 OTHER AUTHORITIES 7 8 9 10 15 16 17 18 Patent L. R. 3.1(b) ...................................................................................................................... 6 Fed. R. Civ. P. 8(a)(2)............................................................................................................... 15 Fed. R. Civ. P. 11(b) ................................................................................................................... 1 Fed. R. Civ. P. 12(b)(6)...................................................................................................... passim Fed. R. Civ. P. 84........................................................................................................................ 8 19 20 21 22 23 24 25 26 27 28 -III- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 Plaintiff Streetspace, Inc. (“Streetspace”) respectfully submits the following memorandum 2 of points and authorities in opposition to Defendants’ Rule 12(b)(6) Motion to dismiss. 3 Defendants’ motion to dismiss should be denied. In fact, Defendants’ motion is so frivolous, it 4 can be denied summarily without oral argument. 5 I. 6 INTRODUCTION Eight months after they received Streetspace’s initial complaint, Defendants have still yet 7 to provide an answer. They now file their second Motion to Dismiss, raising a host of frivolous 8 arguments and factual misrepresentations, and further delaying discovery on the ultimate merits 9 of Streetspace’s constitutionally mandated and exclusive patent rights. 10 Defendants falsely state that Streetspace’s First Amended Complaint (FAC) “does not 11 name or otherwise specify a single [accused] product or service” for Millennial Media and 12 Jumptap, leaving them to “speculate as to what product or service is actually at issue in the suit.” 13 Yet, the FAC clearly identifies “Millennial Media’s MYDAS advertising platform and UMPIRE 14 ad serving technology,” which are the only two distinctly named services offered by Millennial 15 Media. D.E. 30, ¶ 35. Defendants also fail to inform this Court that no publicly available 16 information identifies what Jumptap’s infringing service is specifically called. Like Defendant 17 Millennial Media, Jumptap is in the business of one thing, and one thing only: providing 18 personalized advertisements to users of mobile devices. The argument, therefore, that Millennial 19 Media and Jumptap are left to “speculate” as to what is “actually at issue in the suit” is frivolous, 20 and wasteful of the parties’ and this Court’s time. 21 Moreover, Defendants completely misconstrue the law – “the pleading requirements set 22 forth in Twombly and Iqbal do not require a patentee to identify specific products or services by 23 name in the complaint.” Atwater Partners of Texas LLC v. AT&T, Inc., et al., 2-10-cv-00175 24 (E.D.Tex March 18, 2011 Order) (Ward, J.) (interpreting McZeal v. Sprint Nextel Corp., 501 F.3d 25 1354 (Fed.Cir.2007) (emphasis added)).1 The FAC provides all Defendants, including Millennial 26 1 27 28 The Court in Atwater further noted that “Rule 11 cuts both ways, that is, it is also a violation of Rule 11 to file a frivolous motion. See Fed. R. Civ. P. 11(b). This includes a frivolous Rule 12(b)(6) motion to dismiss for failure to state a claim.” Atwater Partners of Texas LLC at 7; see also Prompt Medical Sys., L.P. v. Allscriptsmisys Healthcare Sol., Inc., No. 6:10-cv-71 (E.D.Tex. Feb. 11, 2011 Order) (Davis, J.) (“The Court strongly encourages the parties to -1- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 2 Media and Jumptap, with ample notice of Streetspace’s patent infringement allegations. Incredibly, Defendants next argue that the claims against Millennial Media and Jumptap 3 should be dismissed with prejudice at the pleading stage because Streetspace “cannot identify any 4 specific service provided by [them] that includes a terminal.” However, Streetspace is not 5 required to recite the claim elements in its Complaint, let alone explain how they map to the 6 features of the accused service. Defendants will receive infringement contentions in due course 7 pursuant to this Court’s local patent rules. Defendants are seeking not a Rule 12(b)(6) dismissal, 8 but a summary judgment of non-infringement. A determination on the merits should not precede 9 an answer to a complaint. 10 Defendants further argue that Streetspace fails to allege the knowledge requirement for 11 induced infringement. It is undisputed that Defendants received actual knowledge of the patent- 12 in-suit when they received Streetspace’s initial complaint. Yet, they contend that Streetspace 13 cannot state a claim for inducement because “knowledge of the patent after the filing of a 14 complaint is not sufficient for [such] pleading[.]” Again, Defendants are advancing another 15 frivolous argument – Streetspace is not alleging that Defendants gained notice of the ‘969 patent 16 after the filing of its first complaint, but concurrently therewith. Nonetheless, the law does not 17 prohibit a later pleading from referring to facts that occurred as a result of an earlier pleading. 18 Indeed, in a past dispute, Apple itself pled indirect infringement in precisely the same way as 19 Streetspace does here, and discovery may well reveal that one or more Defendants in fact had 20 knowledge of Streetspace’s patent long before filing of the complaint. Either way, Streetspace has 21 pled a viable claim for inducement of infringement. 22 In a final misplaced jab, Defendants argue without meaningful authority that “mere 23 presence” of the ’969 Patent in the Google Patents database “is not sufficient to support a 24 reasonable inference that anyone at Google actually was aware of the existence of the ’969 25 Patent.” But the law does not require the inference to be probable—only plausible, and 26 Streetspace’s inference easily meets the standard. Only discovery will reveal when Google and 27 28 try this case on the merits and not unnecessarily burden the Court with technical issues that lack practical substance.”). -2- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 the other Defendants actually first became aware of the ‘969 patent. At any rate, the Complaint 2 additionally alleges that Google learned of the ’969 Patent from Streetspace’s initial complaint. 3 That is a sufficient allegation of Google’s knowledge of the patent. 4 The arguments advanced by Defendants are not only frivolous; they are knowingly 5 frivolous and sanctionable. This Court already rejected many of these arguments once. Two 6 weeks later, however, Defendants decided to re-file many of those same arguments again. 7 Defendants’ motion to dismiss is frivolous and should be denied. 8 II. BACKGROUND 9 On August 23, 2010, Streetspace filed its initial complaint, accusing each Defendant of 10 directly and indirectly infringing U.S. Patent No. 6,847,969 (“the ’969 Patent”). D.E. 1. Eight 11 months later, no Defendant has answered. Instead of responding to Streetspace’s complaint, 12 Defendants filed one motion after another to impede this action from proceeding. 13 Defendants filed their first motion to dismiss on January 18, 2011. D.E. 21. To address 14 Defendants’ objections, Streetspace voluntarily amended its initial complaint on February 25. 15 D.E. 30. Shortly thereafter, Streetspace filed a response to the Court’s Order to Show Cause 16 (D.E. 35), explaining why its proposed amendments should be allowed. D.E. 39. 17 Separately, on Febrary 28, Streetspace filed an opposition to Defendant’s pending motion 18 to dismiss. D.E. 32. At that time, Streetspace put Defendants on notice that Twombly and Iqbal 19 do not apply to the pleading requirements for direct patent infringement per the Federal Circuit’s 20 ruling in McZeal and that Streetspace’s indirect patent infringement allegations followed the 21 template used with success by Defendant Apple in another district court case. Id. Defendants 22 replied on March 7. D.E. 42. In their reply, Defendants argued that the Court should deny 23 Streetspace leave to amend because the proposed amendments would be “futile.” D.E. 42, at 1, 5, 24 6. That same day, this Court granted Streetspace leave to amend and denied as moot Defendants’ 25 first motion to dismiss. D.E. 43. 26 Still unsatisfied, on March 22, Defendants filed this (their second) Motion to Dismiss 27 directed against Streetspace’s First Amended Complaint. D.E. 49. This new Motion repeats 28 -3- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 many of the same arguments that had already been raised in their March 7 reply. 2 III. LEGAL STANDARD 3 Motions to dismiss are purely procedural questions to which the Federal Circuit applies 4 the law of the regional circuit. Core Brace LLC v. Star Seismic LLC, 566 F.3d 1069, 1072 (Fed. 5 Cir. 2009). In the Ninth Circuit, dismissal is “appropriate only where the complaint lacks a 6 cognizable legal theory or sufficient facts to support a cognizable legal theory.” Mendiondo v. 7 Centinela Hosp. Med. Ctr., 521 F.3d 1097, 1104 (9th Cir. 2008). In reviewing a motion to 8 dismiss, the court must assume the truth of all factual allegations and must construe all inferences 9 from them in the light most favorable to the nonmoving party. Thompson v. Davis, 295 F.3d 890, 10 895 (9th Cir. 2002). Indeed, motions to dismiss for failure to state a claim are viewed with 11 disfavor and are rarely granted. See, e.g., Hall v. City of Santa Barbara, 833 F.2d 1270, 1274 (9th 12 Cir. 1986). 13 Under Federal Rule of Civil Procedure 8(a)(2), the plaintiff is only required to set forth a 14 “short and plain statement of the claim showing that the pleader is entitled to relief.” Bell 15 Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). The Rules do not require an elaborate 16 recitation of every fact a plaintiff may ultimately rely upon at trial, but only a statement sufficient 17 to give the defendant fair notice of what the plaintiff’s claim is and the grounds upon which it 18 rests. Conley v. Gibson, 355 U.S. 41, 47 (1957). While it is clear that the complaint must allege 19 enough facts to state a claim that is “plausible on its face,” Ashcroft v. Iqbal, 129 S.Ct. 1937, 20 1940, 1949 (2009), the “plausibility” standard is not akin to a probability requirement. Twombly, 21 550 U.S. at 545. It simply requires enough facts to “raise a reasonable expectation that discovery 22 will reveal evidence” that a defendant has acted unlawfully. Id. 23 In the context of patent litigation, this requirement merely ensures that an accused 24 infringer has sufficient knowledge of the facts alleged to enable it to answer the complaint and 25 defend itself. Phonometrics v. Hospitality Franchise Systems, Inc., 203 F.3d 790, 794 (Fed. Cir. 26 2000). In particular, a claim of direct patent infringement alleged in conformity with Form 18 27 appended to Rule 84 must survive a motion to dismiss for failure to state claim. McZeal v. Sprint 28 -4- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 Nextel Corp., 501 F.3d 1354, 1356-58 (Fed. Cir. 2007); see also Elan Microelectronics Corp. v. 2 Apple, Inc., 2009 WL 2972374, at *2 (N.D. Cal. 2009). Not much is required to satisfy the 3 pleading standards for patent infringement under Federal Circuit case law and Federal Rule of 4 Civil Procedure Form 18. Atwater Partners of Texas LLC v. AT&T, Inc., et al., 2-10-cv-00175 5 (E.D.Tex. March 18, 2011 Order) (Ward, J.). 6 IV. ARGUMENT 7 A. 8 Defendants first argue that Streetspace’s allegations of direct infringement should be 9 dismissed “because they do not identify any allegedly infringing products or services.” D.E. 49 at 10 5. According to Defendants, Streetspace must “name” the specific products and services accused 11 of infringing the ’969 Patent. D.E. 49 at 3. This is not the law. 12 13 Streetspace Properly States Its Claims for Direct Infringement 1. There Is No Categorical Rule That an Allegation for Direct Patent Infringement Must Name the Accused Product or Service Contrary to Defendants’ contention, there is no categorical rule that a plaintiff must name 14 the specific product or service accused of direct patent infringement. Rather, “[d]etermining 15 whether the complaint states a plausible claim for relief will . . . be a context-specific task that 16 requires the reviewing court to draw on its judicial experience and common sense.” Iqbal, 129 17 S.Ct. at 1940. Even conclusory allegations of direct patent infringement are sufficient to survive a 18 motion to dismiss. See McZeal v. Sprint Nextel Corp., 501 F.3d at 1357. Streetspace has gone 19 way beyond conclusory allegations. The pleading requirements in Twombly and Iqbal do not 20 require a patentee to identify specific products or services by name in the complaint. Atwater 21 Partners of Texas LLC v. AT&T, Inc., et al. at 3 (internal citations omitted). Streetspace has 22 identified specific products or services in its FAC. 23 In Xpoint Technologies v. Microsoft (a case cited in Defendants’ own Motion), the court 24 openly declared: “As this court has previously held, it is not necessary to identify specific 25 products, i.e. model names, but plaintiffs pleadings must mimic Form 18 and identify a general 26 category of products.” Xpoint Technologies v. Microsoft, 2010 WL 3187025, at *3 (D. Del. 27 2010). This view is confirmed by the Patent Case Management Judicial Guide, which at least one 28 -5- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 California federal court has found persuasive (see RPost Holdings, Inc. v. Trustifi Corp., 2010 2 10 WL 2079743, at *1 fn.1 (C.D. Cal. 2010)): Infringement complaints are usually sparse and conclusory. Typically, a patent holder will merely allege that a defendant is directly or indirectly infringing a patent. The asserted patents must be identified, and are often attached to the complaint. . . . The complaint should also provide a statement of ownership of the asserted patent, identify the accused infringer(s), provide a brief statement of alleged infringing acts, and (if applicable) a statement regarding the patent owner’s marking of product with the patent number under § 287. Under the notice pleading requirement of Rule 8(a), the patent holder is not required to do more. Therefore, a defendant will not know which claims of the patents are being asserted against it and sometimes will not even know which of its products or processes are accused of infringing. As discussed above, some courts require disclosure of this information early in the case. See, e.g., N.D. Cal. Patent Local Rule 3-1 (requiring early disclosure of asserted claims and accused products). 11 Menell et al., Patent Case Management Judicial Guide § 2.2.3.1 (Federal Judicial Center 2009). 12 Indeed, this District has adopted its own “patent local rules,” which require disclosure of the 13 accused products only after the first case management conference. Patent L. R. 3.1(b). Even 14 then, identification “by name” need be made only to the extent “possible.” Id. 3 4 5 6 7 8 9 15 The cases cited by Defendants are all distinguishable. In Gen-Probe v. Amoco, the 16 complaint’s patent infringement claims were criticized for a number of other shortcomings. Gen- 17 Probe v. Amoco, 926 F.Supp. 948, 960-962 (S.D. Cal. 1996). Most glaringly, the claims were 18 stated “in a confusingly conclusory manner, accusing each of five defendants of three very 19 different causes of action on two different patents, all in one conclusory sentence[.]” Id. at 960. 20 The court found the complaint “unclear [as to] which of the five [defendants] is accused of which 21 type of infringement[: direct, inducement, or contributory.]” Id. “Even were there no other 22 deficiencies, this confusion of which claims apply to which defendants [required] that the 23 complaint be dismissed[.]” Id. at 961. Gen-Probe was distinguished by a later case on precisely 24 this ground. See Bender v. Broadcom Corp., 2009 WL 3571286, at *4 fn.4 (N.D. Cal. 2009). 25 Gen-Probe is not applicable here. 26 In HP v. Intergraph, the plaintiff accused Intergraph of making and selling “infringing 27 software and hardware products[.]” HP v. Intergraph, 2003 U.S. Dist. LEXIS 26092, at *5-6 28 -6- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 (N.D. Cal. 2003). The defendant, however, “produces some 150 technology platforms which are 2 implemented in over 4000 end-user application products.” Id. at *6. Given the large number of 3 products, the court found that the complaint failed to provide the defendant “fair notice” of what 4 is being accused. Id. at *6-7; see also Bender v. LG Electronics, 2010 WL 889541 (N.D. Cal 5 2010)(infringement allegations implicated thousands—if not millions—of defendant’s circuits); 6 Realtime Data v. Morgan Stanley, 721 F.Supp.2d 538, 541 (E.D. Tex. 2010) (infringement 7 allegations implicated numerous IT services provided by defendant). HP was later limited to its 8 facts in Resonance Technology, which held that where the number of products is limited, a 9 description that “narrowly identified the infringing products” is sufficient. Resonance 10 Technology v. Koninklijke Philips Electronics, 2008 WL 4330288, at *2 (C.D. Cal. 2008). 11 Millennial Media and Jumptap provide just one service – mobile advertising. 12 These cases are distinguishable from the present case. Streetspace’s Complaint is not 13 unclear as to which Defendant is accused of which type of infringement. See, e.g., D.E. 30, ¶¶ 14 176, 180. Nor does the Complaint impose on Defendants the heavy burden of scouring thorough 15 millions of circuits. In contrast to the defendants in the cited cases, Millennial Media and 16 Jumptap do not sell multiple products and services. In fact, each company provides just one 17 service: access to their respective mobile advertising networks. Id., ¶¶ 35, 37. 18 It is remarkable and sanctionable that Millennial Media and the other Defendants argue 19 that the FAC “does not name or otherwise specify a single [accused] product or service” for 20 Millennial Media because in ¶ 35 of the FAC, “Millennial Media’s MYDAS advertising platform 21 and UMPIRE ad serving technology” are expressly identified. MYDAS and UMPIRE are the 22 only two distinctly named products or services offered by Millennial Media, according to its 23 website. The allegations set forth in ¶ 35 of the FAC are incorporated by reference into Count 24 Eight – Patent Infringement against Millennial Media. See id., ¶ 174. Even if the law required a 25 patentee to name specific products and services in its infringement allegations, which it does not, 26 a reasonable attorney would not advance Millennial Media’s argument after reading the FAC. 2 27 2 28 Millennial Media’s counsel advancing this argument is the same counsel that is subject to a pending motion to disqualify. See D.E. 29. -7- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 In addition, there is no publicly available information from which Streetspace can discern 2 the specific name of Jumptap’s accused products and services. Like many other single-service 3 Internet companies, Jumptap does not appear to publicize and market a separate or distinct name 4 for its service. Rather, the service is simply associated with the company name – “the Jumptap 5 mobile ad network.” Streetspace’s FAC does adequately identify the accused service by 6 identifying the service provider (Jumptap), and Defendants’ attempt to analogize this case to the 7 various cases they present is misleading. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 2. The Amended Complaint Conforms with Form 18 of the Federal Rules of Civil Procedure As mentioned above, Twombly and Iqbal do not raise the standard for pleading direct patent infringement above what is currently required by the Federal Rules of Civil Procedure. In particular, the Rules include Form 18, which “provides an example of alleging direct patent infringement[.]” Elan, 2009 WL 2972374, at *2. “Under Rule 84 of the Federal Rules of Civil Procedure[,] a court must accept as sufficient any pleading in conformance with the form[].” Id. The sufficiency of Form 18 is acknowledged even in cases cited by Defendants: “The Supreme Court’s decisions in Twombly and Iqbal have not affected the adequacy of complying with Form 18. To hold otherwise would render Rule 84 and Form 18 invalid, which cannot be done by judicial action.” Realtime Data, 721 F.Supp.2d at 542. Form 18 does not require the identification of any specific accused product or service. General types of products such as “electric motors” will do: 2. On date, United States Letters Patent No. _______________ were issued to the plaintiff for an invention in an electric motor. The plaintiff owned the patent throughout the period of the defendant’s infringing acts and still owns the patent. 3. The defendant has infringed and is still infringing the Letters Patent by making, selling, and using electric motors that embody the patented invention, and the defendant will continue to do so unless enjoined by this court. Fed. R. Civ. P. Form 18 (2007), ¶¶ 2, 3; see also Advanced Analogic Technologies v. Kinetic Technologies, 2009 WL 1974602, at *1 (N.D. Cal. 2009) (“To the extent [the defendant] seeks a more definite statement providing further details as to the infringing products,” the court ruled, “the motion will be denied, for the reason the material sought[] is obtainable through 28 -8- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 discovery.”); Resonance Technology, 2008 WL 4330288, at *2 (“Like the example in Form 18, in 2 this case Plaintiff’s [complaint] alleges a specific ‘type’ of product that allegedly infringes upon 3 the patents at issue[.] . . . [It] is not so vague or ambiguous that Defendants cannot reasonably be 4 required to respond.”) 5 Streetspace’s allegation of infringing products and services easily passes the test. As an 6 initial matter, contrary to Defendants’ assertions, the FAC does identify Millennial Media’s 7 infringing system by name. See D.E. 30, ¶ 35. With respect to Jumptap, the Complaint alleges 8 that Jumptap is infringing “by making, using, selling . . . a method and/or system for providing 9 personalized information and/or targeted online advertising services based on location, 10 consumers’ profiles and/or usage history.” Id. at ¶ 189. This sentence plainly notifies Jumptap 11 that its online advertising service (and the system for delivering that service) is believed to be 12 infringing. The Complaint then devotes several more paragraphs to allege additional details 13 about the accused system and service. See, e.g., id. at ¶¶ 191 (referring to Jumptap’s “mobile 14 advertising network”), 193 (databases to track consumer data), 194 (software to target ads). 15 These allegations narrowly identify the type of service being accused. They go way beyond what 16 is required by Form 18 (reciting only “electric motors”), and are not “so vague or ambiguous” as 17 to preclude Jumptap from responding to the charge. 18 Ironically, despite their repeated complaints that Streetspace’s allegations are “far too 19 vague,” Millennial Media and Jumptap were able to glean enough from the Complaint to 20 formulate a non-infringement argument. See D.E. 49 at 6 (arguing that they do not infringe 21 because neither company provides a “terminal” as part of its service). So confident are they of 22 their non-infringement that Millennial Media and Jumptap urge this Court to dismiss the claims 23 against them “with prejudice”—before having even received “fair notice” of what Streetspace is 24 actually accusing. Id. The reality is, Millennial Media and Jumptap received fair notice of their 25 accused system and service the day they received the initial complaint. Instead of continuing to 26 quibble over the words of this Complaint, they should try responding to it. 27 28 -9- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 3. 1 2 Now Is Not the Time for an Element-by-Element Infringement Analysis With regard to Defendants’ argument that Millennial Media and Jumptap do not infringe 3 because they provide no “terminal,” Streetspace disagrees. Regardless, now is not the time to 4 engage in this sort of debate. Even if Defendants’ argument were correct—which it is not—a 5 Rule 12(b)(6) motion is not the proper vehicle to construe a patent or argue non-infringement. 6 The question before this Court is simply whether Streetspace has stated a plausible claim. Indeed, 7 the law does not even require the plaintiff to allege the claim elements of the asserted patent. 8 Phonometrics, 203 F.3d at 794. “[I]t is in the discovery phase of litigation, not pleading, that the 9 parties are required to conscientiously develop facts that support the various theories of 10 infringement, or non-infringement as the case may be.” Tune Hunter, Inc. v. Samsung 11 Telecommunications Am., LLC, 2010 WL 1409245, *4 (E.D. Tex. 2010). For the reasons stated 12 above, Streetspace properly states its claims of direct infringement against Millennial Media and 13 Jumptap. These claims should not be dismissed, let alone dismissed with prejudice. 14 B. 15 Defendants next argue that Streetspace’s allegation of their knowledge of the patent-in- Streetspace Properly States Its Claims for Indirect Infringement 16 suit is improper because “as a matter of law[,] knowledge after filing of the present action is not 17 sufficient for pleading the requisite knowledge for indirect infringement.” See D.E. 49 at 8 18 (citing Xpoint Techs., Inc. v. Microsoft Corp., 2010 WL 3187025, at *6 (D. Del. 2010) and 19 Mallinckrodt Inc. v. E-Z-Em, Inc., 670 F.Supp.2d 349, 354, n.1 (D. Del., Nov. 20, 2009)). 20 According to them, unless they knew of the ’969 Patent before the filing of the initial complaint, 21 Streetspace cannot state a claim of indirect infringement.3 See D.E. 49 at 9 (“Either Streetspace 22 can plead . . . the requisite knowledge of the ’969 Patent at the time it filed the original 23 Complaint, or it cannot.”). This contention is also incorrect. Streetspace is alleging the 24 Defendants gained knowledge of the ‘969 patent at least as early as the filing date of the initial 25 complaint – not after the filing date. 26 3 27 28 If this contention was correct, then every patentee would have to put an accused infringer on notice of the applicable patent and/or infringement prior to filing a complaint – thereby risking the filing of a declaratory judgment initiated by the accused infringer – which is not the current state of the law. -10- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 2 1. Xpoint and Mallinckrodt Do Not Prohibit an Indirect Infringement Claim from Alleging the Accused’s Knowledge of the Patent-in-Suit Based on His Receipt of the Initial Complaint 3 The two decisions cited by Defendants—Xpoint and Mallinckrodt—are gross outliers that 4 have not been followed by any court outside of Delaware. In fact, they are not even the law in the 5 Second Circuit. See, e.g., Automated Transactions, LLC v. First Niagra Fin. Group, Inc., 2010 6 U.S. Dist. LEXIS 141275, at *15-16 (W.D.N.Y. 2010) (“[I]n this Circuit at least, pre-filing 7 knowledge of the patents is not essential to a claim of induced infringement.” (emphasis added)). 8 9 Additionally, in both of those cases, the complaint did not actually rely on its filing date as a basis for knowledge of the patent. In both cases, the plaintiff did not allege the origin of the 10 defendant’s knowledge until during later argument. See Xpoint, 2010 WL 3187025 at *6, 11 Mallinckrodt, 670 F. Supp. 2d at 354, n.1. At most, these decisions merely hold that this sort of 12 allegation cannot be raised for the first time in later argument. They do not support the result that 13 Defendants urge here—that Streetspace be barred from alleging in its Complaint this action’s 14 commencement date as the date of actual knowledge of the patent. 15 The facts of this case are different from Xpoint and Mallinckrodt. Here, the pleading at 16 issue is an amended complaint, filed after the initial complaint. Here, the FAC states that 17 Defendants gained actual knowledge of the ’969 Patent upon receiving the initial complaint. See, 18 e.g., D.E. 30, ¶ 90. And here, the FAC states that Defendants continued their inducing conduct 19 after receiving the initial complaint. See, e.g., id. at ¶¶ 71-73. These allegations clearly specify 20 that Defendants engaged in inducing conduct with the requisite knowledge of the patent-in-suit. 21 Streetspace acknowledges that it currently lacks absolute knowledge as to Defendants’ 22 awareness of the ’969 Patent before this lawsuit began. But rather than arguing about whether it 23 can or cannot plead Defendants’ pre-filing knowledge of the ’969 Patent, Streetspace simply 24 states the indisputable fact that Defendants have known of the patent since at least as early as the 25 filing of the first complaint, i.e., August 23, 2010. See, e.g., D.E. 30, ¶ 109. A plaintiff is not 26 precluded from stating such facts to support a claim of post-filing indirect infringement. See, e.g., 27 Minkus Electronic Display Systems v. Micron Systems, 2011 U.S. Dist. LEXIS 26827 (D. Del. 28 -11- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 Mar. 16, 2011)(The court granted defendant’s motion to dismiss, but only to the extent that 2 Minkus’ claim for indirect infringement sought pre-filing damages. As to the defendant’s post- 3 filing activities, plaintiff’s indirect infringement claim actually survived.). Defendants’ reliance 4 on Xpoint and Mallinckrodt is thus misplaced. 5 6 7 2. If Streetspace Is Prevented from Stating Its Claims for Indirect Infringement, Defendants Will Effectively Escape Liability for Their Actionable Post-Filing Conduct Defendants’ view of the law makes no sense. If they were correct, then no defendant will 8 be held liable for indirect infringement where the defendant first learns of the infringed patent 9 from the initial complaint—because no plaintiff will be able to state a claim in such a situation. 10 But that is simply not the case. It is well settled that liability for indirect infringement may be 11 triggered upon a filing of a complaint for patent infringement. See, e.g., Broadcom v. Qualcomm, 12 2007 U.S. Dist. LEXIS 62764, *15 (C.D. Cal. 2007) (“Given Qualcomm’s knowledge of 13 Broadcom’s contentions at least as of the date of the filing of the complaint in May 2005, the 14 contention that Qualcomm lacked the required specific intent [for inducement] rings hollow.”), 15 vacated on other grounds, Broadcom Corp. v. Qualcomm, Inc., 2007 U.S. Dist. LEXIS 86627 16 (C.D. Cal. 2007); Monolithic Power Systems v. O2 Micro International, 476 F.Supp.2d 1143, 17 1158 (N.D. Cal. 2007) (Denied in part a defendant’s motion for summary judgment because “it 18 has known, since it was served,” that “the combination for which its components were especially 19 made is allegedly both patented and infringing.”); Cybiotronics, Ltd. v. Golden Source 20 Electronics, Ltd., 2001 U.S. Dist. LEXIS 6191, at *22-23 (C.D. Cal. 2001) (It was “undisputed 21 that [the defendant] was first served with the Complaint[] on February 22, 2000[,] this date 22 represent[ed] the first date that actual knowledge [of the patent-in-suit] may be imputed.”). In 23 general, the law allows a plaintiff to prove a defendant’s knowledge of the patent-in-suit based on 24 his receipt of the initial complaint. See 35 U.S.C. 287(a) (“Filing of an action for infringement 25 shall constitute[] notice [of the patent’s existence].”). A defendant can be held liable for indirect 26 infringement because of knowledge of a patent first gained from a complaint for patent 27 infringement. And if the plaintiff can recover for such a claim, then surely he must be able to 28 -12- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 plead it. 2 Indeed, Apple pled indirect infringement in precisely this fashion in Elan 3 Microelectronics v. Apple, alleging that Elan “has had actual knowledge of the ’218 patent since 4 at least July 1, 2009[, the date it was first served with Apple’s counterclaims].”4 Coddington 5 Decl., ¶¶ 2, 3, and Exh. A at ¶ 58. The allegation appeared in Apple’s second amended answer, 6 filed in response to a court order dismissing Apple’s original counterclaims of indirect 7 infringement. See Elan, 2009 WL 2972374 at *2. Neither the court nor Elan challenged Apple’s 8 new counterclaims. 9 Like Apple’s allegation in Elan, Streetspace’s allegation here is proper. It does not, as 10 Defendants suggest, “fabricate” a claim of indirect infringement where there is none. See D.E. 49 11 at 8. On the contrary, it is the Defendants who are attempting to fabricate a defense. If 12 Streetspace is prevented from making its allegation here because of the way Defendants found out 13 about the patent, the same reasoning would also prevent Streetspace from stating its claims in any 14 subsequent pleading. Id. at 9 (arguing that any further amendment “would be futile”). In effect, 15 Defendants would escape liability for their post-filing indirect infringement. 16 The law of pleadings is designed to provide adequate notice to the accused; it does not 17 absolve him from punishment where real liability exists. Streetspace’s allegations are simple. 18 Defendants gained actual knowledge of the ’969 Patent upon receiving the initial complaint. See, 19 e.g., D.E. 30, ¶ 90. Defendants continued their inducing conduct after receiving the initial 20 complaint. See, e.g., id. ¶¶ 71-73. If true, these allegations establish Defendants’ liability for 21 inducement. See Broadcom, 2007 U.S. Dist. LEXIS 86627, at *15, Monolithic Power Sys., 476 22 F.Supp.2d at 1158, Cybiotronics, 2001 U.S. Dist. LEXIS 6191, at *22-23. Streetspace must be 23 allowed to state its claims. 3. 24 25 26 27 28 Streetspace’s Factual Allegation Concerning Google’s Patent Database Creates a Reasonable Inference of Google’s Knowledge of the Patentin-Suit Defendants next take issue with Streetspace’s factual allegations supporting Google’s 4 Remarkably, Defendants (including Apple) advance an argument that apparently does not apply to Apple in other indirect patent infringement cases. -13- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 knowledge of the patent-in-suit, arguing that “the mere presence of the ’969 Patent within the 2 comprehensive Google Patents database is not sufficient to support a reasonable inference that 3 anyone at Google actually was aware of the existence of the ’969 Patent.” D.E. 49 at 8. 4 However, Defendants cite no meaningful authority to support their argument. 5 Defendants’ argument only recites platitudes. Id. at 8-9 (quoting Twombly, 550 U.S. 544 6 and Hackford v. Babbitt, 14 F.3d 1457 (10th Cir. 1994)). Twombly and Hackford are not patent 7 infringement cases. The Hackford opinion briefly touches on the pleading requirements for 8 standing, but does not discuss it in any detail. See Hackford, 14 F.3d at 1464 (“Issue on 9 Appeal”), 1465. 10 Twombly dealt with the pleading of an antitrust claim. Specifically, the issue was whether 11 a factual allegation of “parallel conduct” between market participants was enough to suggest an 12 “illegal agreement.” Twombly, 550 U.S. at 545. In its analysis, the Supreme Court stated that 13 “[f]actual allegations must be enough to raise a right to relief above the speculative level on the 14 assumption that all of the complaint’s allegations are true.” Id. However, it then added: “Asking 15 for plausible grounds does not impose a probability requirement at the pleading stage; it simply 16 calls for enough fact to raise a reasonable expectation that discovery will reveal evidence of 17 illegal agreement.” Id. 18 Streetspace’s allegations of Google’s knowledge of the ’969 Patent easily meets the 19 Twombly standard. The Complaint states that Google maintains a text-searchable database 20 containing the ’969 Patent. D.E. 30, ¶ 72. It is easy to see why, based on this fact alone, 21 Streetspace would have a reasonable expectation that discovery will reveal additional evidence of 22 Google’s actual knowledge of the patent. Google not only provides access to patents, it also 23 processes them and collects metadata about them. See id. Such metadata represents Google 24 knowledge, which may or may not be available to the public. Google’s knowledge becomes even 25 more plausible when one considers that the ’969 Patent deals with, among other things, online 26 advertising—something that is part of Google’s core business. Id., ¶¶ 6, 15. Indeed, it is difficult 27 to understand how a company could spend the effort to acquire, process, and store in its database 28 -14- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD 1 a document related to its business—and yet remain totally ignorant of its existence. Streetspace’s 2 inference is reasonable and plausible, and amounts to more than mere speculation. 3 In any event, as discussed above, Streetspace properly alleges Google’s knowledge of the 4 ’969 Patent because it already states that Google learned of the patent when it received 5 Streetspace’s initial complaint. See id., ¶ 72. That short and plain statement of fact is sufficient, 6 and the law demands no more. See Fed. R. Civ. P. 8(a)(2). 7 V. CONCLUSION 8 For the foregoing reasons, Defendants’ Motion to Dismiss should be denied entirely. 9 Respectfully submitted, 10 Dated: April 25, 2011 SAN DIEGO IP LAW GROUP LLP 11 12 By: DOUGLAS E. OLSON JAMES V. FAZIO, III TREVOR Q. CODDINGTON, PH.D. 13 14 15 Attorneys for Plaintiff STREETSPACE, INC. 16 17 18 19 20 21 22 23 24 25 26 27 28 -15- OPPOSITION TO MOTION TO DISMISS CASE NO. 10-CV-1757-LAB-MDD

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