Streetspace, Inc v. Google, Inc. et al
Filing
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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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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.
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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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STREETSPACE, INC., a Delaware
corporation,
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Plaintiff,
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vs.
CASE NO. 10-CV-1757-LAB-MDD
STREETSPACE INC.’S
MEMORANDUM IN OPPOSITION TO
DEFENDANTS’ SECOND RULE
12(B)(6) MOTION TO DISMISS
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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
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Defendants.
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
TABLE OF CONTENTS
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I.
Page
INTRODUCTION .............................................................................................................. 1
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II.
BACKGROUND ................................................................................................................ 3
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III.
LEGAL STANDARD ......................................................................................................... 4
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IV. ARGUMENT...................................................................................................................... 5
A.
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Streetspace Properly States Its Claims for Direct Infringement ................................... 5
1.
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There Is No Categorical Rule That an Allegation for Direct Patent Infringement
Must Name the Accused Product or Service ....................................................... 5
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2.
The Amended Complaint Conforms with Form 18 of the Federal Rules of Civil
Procedure .......................................................................................................... 8
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3.
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B.
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Now Is Not the Time for an Element-by-Element Infringement Analysis ......... 10
Streetspace Properly States Its Claims for Indirect Infringement ............................... 10
1.
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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
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of the Initial Complaint .................................................................................... 11
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2.
If Streetspace Is Prevented from Stating Its Claims for Indirect Infringement,
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Defendants Will Effectively Escape Liability for Their Actionable Post-Filing
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Conduct ........................................................................................................... 12
3.
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Streetspace’s Factual Allegation Concerning Google’s Patent Database Creates
a Reasonable Inference of Google’s Knowledge of the Patent-in-Suit .............. 13
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V.
CONCLUSION................................................................................................................. 15
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-I-
OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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TABLE OF AUTHORITIES
Page(s)
CASES
Advanced Analogic Technologies v. Kinetic Technologies,
2009 WL 1974602 (N.D. Cal. 2009) ..................................................................................... 8
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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
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Automated Transactions, LLC v. First Niagra Fin. Group, Inc.,
2010 U.S. Dist. LEXIS 141275 (W.D.N.Y. 2010) ............................................................... 11
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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
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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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
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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
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Resonance Technology v. Koninklijke Philips Electronics,
2008 WL 4330288 (C.D. Cal. 2008) .................................................................................. 7, 9
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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
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STATUTES
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35 U.S.C. § 287(a) .................................................................................................................... 12
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OTHER AUTHORITIES
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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
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-III-
OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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Plaintiff Streetspace, Inc. (“Streetspace”) respectfully submits the following memorandum
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of points and authorities in opposition to Defendants’ Rule 12(b)(6) Motion to dismiss.
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Defendants’ motion to dismiss should be denied. In fact, Defendants’ motion is so frivolous, it
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can be denied summarily without oral argument.
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I.
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INTRODUCTION
Eight months after they received Streetspace’s initial complaint, Defendants have still yet
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to provide an answer. They now file their second Motion to Dismiss, raising a host of frivolous
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arguments and factual misrepresentations, and further delaying discovery on the ultimate merits
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of Streetspace’s constitutionally mandated and exclusive patent rights.
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Defendants falsely state that Streetspace’s First Amended Complaint (FAC) “does not
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name or otherwise specify a single [accused] product or service” for Millennial Media and
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Jumptap, leaving them to “speculate as to what product or service is actually at issue in the suit.”
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Yet, the FAC clearly identifies “Millennial Media’s MYDAS advertising platform and UMPIRE
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ad serving technology,” which are the only two distinctly named services offered by Millennial
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Media. D.E. 30, ¶ 35. Defendants also fail to inform this Court that no publicly available
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information identifies what Jumptap’s infringing service is specifically called. Like Defendant
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Millennial Media, Jumptap is in the business of one thing, and one thing only: providing
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personalized advertisements to users of mobile devices. The argument, therefore, that Millennial
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Media and Jumptap are left to “speculate” as to what is “actually at issue in the suit” is frivolous,
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and wasteful of the parties’ and this Court’s time.
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Moreover, Defendants completely misconstrue the law – “the pleading requirements set
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forth in Twombly and Iqbal do not require a patentee to identify specific products or services by
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name in the complaint.” Atwater Partners of Texas LLC v. AT&T, Inc., et al., 2-10-cv-00175
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(E.D.Tex March 18, 2011 Order) (Ward, J.) (interpreting McZeal v. Sprint Nextel Corp., 501 F.3d
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1354 (Fed.Cir.2007) (emphasis added)).1 The FAC provides all Defendants, including Millennial
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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
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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Media and Jumptap, with ample notice of Streetspace’s patent infringement allegations.
Incredibly, Defendants next argue that the claims against Millennial Media and Jumptap
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should be dismissed with prejudice at the pleading stage because Streetspace “cannot identify any
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specific service provided by [them] that includes a terminal.” However, Streetspace is not
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required to recite the claim elements in its Complaint, let alone explain how they map to the
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features of the accused service. Defendants will receive infringement contentions in due course
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pursuant to this Court’s local patent rules. Defendants are seeking not a Rule 12(b)(6) dismissal,
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but a summary judgment of non-infringement. A determination on the merits should not precede
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an answer to a complaint.
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Defendants further argue that Streetspace fails to allege the knowledge requirement for
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induced infringement. It is undisputed that Defendants received actual knowledge of the patent-
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in-suit when they received Streetspace’s initial complaint. Yet, they contend that Streetspace
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cannot state a claim for inducement because “knowledge of the patent after the filing of a
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complaint is not sufficient for [such] pleading[.]” Again, Defendants are advancing another
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frivolous argument – Streetspace is not alleging that Defendants gained notice of the ‘969 patent
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after the filing of its first complaint, but concurrently therewith. Nonetheless, the law does not
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prohibit a later pleading from referring to facts that occurred as a result of an earlier pleading.
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Indeed, in a past dispute, Apple itself pled indirect infringement in precisely the same way as
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Streetspace does here, and discovery may well reveal that one or more Defendants in fact had
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knowledge of Streetspace’s patent long before filing of the complaint. Either way, Streetspace has
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pled a viable claim for inducement of infringement.
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In a final misplaced jab, Defendants argue without meaningful authority that “mere
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presence” of the ’969 Patent in the Google Patents database “is not sufficient to support a
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reasonable inference that anyone at Google actually was aware of the existence of the ’969
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Patent.” But the law does not require the inference to be probable—only plausible, and
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Streetspace’s inference easily meets the standard. Only discovery will reveal when Google and
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try this case on the merits and not unnecessarily burden the Court with technical issues that lack practical
substance.”).
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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the other Defendants actually first became aware of the ‘969 patent. At any rate, the Complaint
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additionally alleges that Google learned of the ’969 Patent from Streetspace’s initial complaint.
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That is a sufficient allegation of Google’s knowledge of the patent.
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The arguments advanced by Defendants are not only frivolous; they are knowingly
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frivolous and sanctionable. This Court already rejected many of these arguments once. Two
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weeks later, however, Defendants decided to re-file many of those same arguments again.
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Defendants’ motion to dismiss is frivolous and should be denied.
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II.
BACKGROUND
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On August 23, 2010, Streetspace filed its initial complaint, accusing each Defendant of
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directly and indirectly infringing U.S. Patent No. 6,847,969 (“the ’969 Patent”). D.E. 1. Eight
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months later, no Defendant has answered. Instead of responding to Streetspace’s complaint,
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Defendants filed one motion after another to impede this action from proceeding.
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Defendants filed their first motion to dismiss on January 18, 2011. D.E. 21. To address
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Defendants’ objections, Streetspace voluntarily amended its initial complaint on February 25.
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D.E. 30. Shortly thereafter, Streetspace filed a response to the Court’s Order to Show Cause
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(D.E. 35), explaining why its proposed amendments should be allowed. D.E. 39.
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Separately, on Febrary 28, Streetspace filed an opposition to Defendant’s pending motion
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to dismiss. D.E. 32. At that time, Streetspace put Defendants on notice that Twombly and Iqbal
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do not apply to the pleading requirements for direct patent infringement per the Federal Circuit’s
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ruling in McZeal and that Streetspace’s indirect patent infringement allegations followed the
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template used with success by Defendant Apple in another district court case. Id. Defendants
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replied on March 7. D.E. 42. In their reply, Defendants argued that the Court should deny
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Streetspace leave to amend because the proposed amendments would be “futile.” D.E. 42, at 1, 5,
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6. That same day, this Court granted Streetspace leave to amend and denied as moot Defendants’
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first motion to dismiss. D.E. 43.
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Still unsatisfied, on March 22, Defendants filed this (their second) Motion to Dismiss
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directed against Streetspace’s First Amended Complaint. D.E. 49. This new Motion repeats
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CASE NO. 10-CV-1757-LAB-MDD
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many of the same arguments that had already been raised in their March 7 reply.
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III.
LEGAL STANDARD
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Motions to dismiss are purely procedural questions to which the Federal Circuit applies
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the law of the regional circuit. Core Brace LLC v. Star Seismic LLC, 566 F.3d 1069, 1072 (Fed.
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Cir. 2009). In the Ninth Circuit, dismissal is “appropriate only where the complaint lacks a
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cognizable legal theory or sufficient facts to support a cognizable legal theory.” Mendiondo v.
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Centinela Hosp. Med. Ctr., 521 F.3d 1097, 1104 (9th Cir. 2008). In reviewing a motion to
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dismiss, the court must assume the truth of all factual allegations and must construe all inferences
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from them in the light most favorable to the nonmoving party. Thompson v. Davis, 295 F.3d 890,
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895 (9th Cir. 2002). Indeed, motions to dismiss for failure to state a claim are viewed with
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disfavor and are rarely granted. See, e.g., Hall v. City of Santa Barbara, 833 F.2d 1270, 1274 (9th
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Cir. 1986).
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Under Federal Rule of Civil Procedure 8(a)(2), the plaintiff is only required to set forth a
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“short and plain statement of the claim showing that the pleader is entitled to relief.” Bell
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Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). The Rules do not require an elaborate
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recitation of every fact a plaintiff may ultimately rely upon at trial, but only a statement sufficient
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to give the defendant fair notice of what the plaintiff’s claim is and the grounds upon which it
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rests. Conley v. Gibson, 355 U.S. 41, 47 (1957). While it is clear that the complaint must allege
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enough facts to state a claim that is “plausible on its face,” Ashcroft v. Iqbal, 129 S.Ct. 1937,
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1940, 1949 (2009), the “plausibility” standard is not akin to a probability requirement. Twombly,
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550 U.S. at 545. It simply requires enough facts to “raise a reasonable expectation that discovery
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will reveal evidence” that a defendant has acted unlawfully. Id.
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In the context of patent litigation, this requirement merely ensures that an accused
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infringer has sufficient knowledge of the facts alleged to enable it to answer the complaint and
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defend itself. Phonometrics v. Hospitality Franchise Systems, Inc., 203 F.3d 790, 794 (Fed. Cir.
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2000). In particular, a claim of direct patent infringement alleged in conformity with Form 18
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appended to Rule 84 must survive a motion to dismiss for failure to state claim. McZeal v. Sprint
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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Nextel Corp., 501 F.3d 1354, 1356-58 (Fed. Cir. 2007); see also Elan Microelectronics Corp. v.
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Apple, Inc., 2009 WL 2972374, at *2 (N.D. Cal. 2009). Not much is required to satisfy the
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pleading standards for patent infringement under Federal Circuit case law and Federal Rule of
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Civil Procedure Form 18. Atwater Partners of Texas LLC v. AT&T, Inc., et al., 2-10-cv-00175
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(E.D.Tex. March 18, 2011 Order) (Ward, J.).
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IV.
ARGUMENT
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A.
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Defendants first argue that Streetspace’s allegations of direct infringement should be
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dismissed “because they do not identify any allegedly infringing products or services.” D.E. 49 at
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5. According to Defendants, Streetspace must “name” the specific products and services accused
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of infringing the ’969 Patent. D.E. 49 at 3. This is not the law.
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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
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the specific product or service accused of direct patent infringement. Rather, “[d]etermining
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whether the complaint states a plausible claim for relief will . . . be a context-specific task that
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requires the reviewing court to draw on its judicial experience and common sense.” Iqbal, 129
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S.Ct. at 1940. Even conclusory allegations of direct patent infringement are sufficient to survive a
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motion to dismiss. See McZeal v. Sprint Nextel Corp., 501 F.3d at 1357. Streetspace has gone
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way beyond conclusory allegations. The pleading requirements in Twombly and Iqbal do not
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require a patentee to identify specific products or services by name in the complaint. Atwater
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Partners of Texas LLC v. AT&T, Inc., et al. at 3 (internal citations omitted). Streetspace has
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identified specific products or services in its FAC.
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In Xpoint Technologies v. Microsoft (a case cited in Defendants’ own Motion), the court
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openly declared: “As this court has previously held, it is not necessary to identify specific
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products, i.e. model names, but plaintiffs pleadings must mimic Form 18 and identify a general
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category of products.” Xpoint Technologies v. Microsoft, 2010 WL 3187025, at *3 (D. Del.
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2010). This view is confirmed by the Patent Case Management Judicial Guide, which at least one
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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California federal court has found persuasive (see RPost Holdings, Inc. v. Trustifi Corp., 2010
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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).
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Menell et al., Patent Case Management Judicial Guide § 2.2.3.1 (Federal Judicial Center 2009).
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Indeed, this District has adopted its own “patent local rules,” which require disclosure of the
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accused products only after the first case management conference. Patent L. R. 3.1(b). Even
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then, identification “by name” need be made only to the extent “possible.” Id.
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The cases cited by Defendants are all distinguishable. In Gen-Probe v. Amoco, the
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complaint’s patent infringement claims were criticized for a number of other shortcomings. Gen-
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Probe v. Amoco, 926 F.Supp. 948, 960-962 (S.D. Cal. 1996). Most glaringly, the claims were
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stated “in a confusingly conclusory manner, accusing each of five defendants of three very
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different causes of action on two different patents, all in one conclusory sentence[.]” Id. at 960.
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The court found the complaint “unclear [as to] which of the five [defendants] is accused of which
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type of infringement[: direct, inducement, or contributory.]” Id. “Even were there no other
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deficiencies, this confusion of which claims apply to which defendants [required] that the
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complaint be dismissed[.]” Id. at 961. Gen-Probe was distinguished by a later case on precisely
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this ground. See Bender v. Broadcom Corp., 2009 WL 3571286, at *4 fn.4 (N.D. Cal. 2009).
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Gen-Probe is not applicable here.
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In HP v. Intergraph, the plaintiff accused Intergraph of making and selling “infringing
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software and hardware products[.]” HP v. Intergraph, 2003 U.S. Dist. LEXIS 26092, at *5-6
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CASE NO. 10-CV-1757-LAB-MDD
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(N.D. Cal. 2003). The defendant, however, “produces some 150 technology platforms which are
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implemented in over 4000 end-user application products.” Id. at *6. Given the large number of
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products, the court found that the complaint failed to provide the defendant “fair notice” of what
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is being accused. Id. at *6-7; see also Bender v. LG Electronics, 2010 WL 889541 (N.D. Cal
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2010)(infringement allegations implicated thousands—if not millions—of defendant’s circuits);
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Realtime Data v. Morgan Stanley, 721 F.Supp.2d 538, 541 (E.D. Tex. 2010) (infringement
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allegations implicated numerous IT services provided by defendant). HP was later limited to its
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facts in Resonance Technology, which held that where the number of products is limited, a
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description that “narrowly identified the infringing products” is sufficient. Resonance
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Technology v. Koninklijke Philips Electronics, 2008 WL 4330288, at *2 (C.D. Cal. 2008).
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Millennial Media and Jumptap provide just one service – mobile advertising.
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These cases are distinguishable from the present case. Streetspace’s Complaint is not
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unclear as to which Defendant is accused of which type of infringement. See, e.g., D.E. 30, ¶¶
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176, 180. Nor does the Complaint impose on Defendants the heavy burden of scouring thorough
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millions of circuits. In contrast to the defendants in the cited cases, Millennial Media and
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Jumptap do not sell multiple products and services. In fact, each company provides just one
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service: access to their respective mobile advertising networks. Id., ¶¶ 35, 37.
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It is remarkable and sanctionable that Millennial Media and the other Defendants argue
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that the FAC “does not name or otherwise specify a single [accused] product or service” for
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Millennial Media because in ¶ 35 of the FAC, “Millennial Media’s MYDAS advertising platform
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and UMPIRE ad serving technology” are expressly identified. MYDAS and UMPIRE are the
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only two distinctly named products or services offered by Millennial Media, according to its
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website. The allegations set forth in ¶ 35 of the FAC are incorporated by reference into Count
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Eight – Patent Infringement against Millennial Media. See id., ¶ 174. Even if the law required a
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patentee to name specific products and services in its infringement allegations, which it does not,
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a reasonable attorney would not advance Millennial Media’s argument after reading the FAC. 2
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Millennial Media’s counsel advancing this argument is the same counsel that is subject to a pending motion to
disqualify. See D.E. 29.
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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In addition, there is no publicly available information from which Streetspace can discern
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the specific name of Jumptap’s accused products and services. Like many other single-service
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Internet companies, Jumptap does not appear to publicize and market a separate or distinct name
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for its service. Rather, the service is simply associated with the company name – “the Jumptap
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mobile ad network.” Streetspace’s FAC does adequately identify the accused service by
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identifying the service provider (Jumptap), and Defendants’ attempt to analogize this case to the
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various cases they present is misleading.
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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
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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
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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
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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
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OPPOSITION TO MOTION TO DISMISS
CASE NO. 10-CV-1757-LAB-MDD
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