DoDots Licensing Solutions LLC v. Lenovo Holding Co., Inc. et al
Filing
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MEMORANDUM OPINION. Signed by Judge Maryellen Noreika on 12/19/2018. (dlw)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
DODOTS LICENSlNG SOLUTIONS LLC,
Plaintiff,
v.
LENOVO HOLDING COMPANY, INC.,
LENOVO (UNITED STATES) INC. and
MOTOROLA MOBILITY LLC,
Defendants.
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C.A. No. 18-098 (MN)
MEMORANDUM OPINION
Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE; Perry Goldberg, PROGRESS
LLP, Los Angeles, CA - attorneys for Plaintiff
Frederick L. Cottrell, III, Renee M. Mosley, RICHARDS, LAYTON & FINGER, P.A., Wilmington,
DE; Charanjit Brahma, Anup M. Shah, Oscar A. Figueroa, TROUTMAN SANDERS LLP, San
Francisco, CA - attorneys for Defendants
December 19, 2018
Wilmington, Delaware
, U.S. DISTRICT JUDGE:
Presently before the Court is Defendants Lenovo (United States) Inc.' s, Lenovo Holding
Co., Inc.'s, and Motorola Mobility LLC's (collectively, "Defendants") partial motion to dismiss
(D.I. 17) the First Amended Complaint (D.I. 15) for failure to state a claim on the grounds that
Plaintiff DoDots Licensing Solutions LLC ("Plaintiff') does not plausibly allege direct and
induced infringement of various asserted patents. For the reasons set forth below, the Court
GRANTS-IN-PART and DENIES-IN-PART Defendants' motion.
I.
BACKGROUND
On January 16, 2018, Plaintiff filed the present action, alleging that Defendants infringe
various claims of U.S. Patent No. 9,369,545 ("the '545 Patent"). (D.I. 1 ,r 22). On June 6, 2018,
Defendants moved to dismiss the Complaint for failure to state a claim pursuant to Rule 12(b)(6)
of the Federal Rules of Civil Procedure, arguing that the Complaint failed to plausibly allege that
Defendants directly infringe the '545 Patent. (See D.I. 9 & 10). In response, on June 27, 2018,
Plaintiff filed a First Amended Complaint that added two patents to the case - U.S. Patent Nos.
8,020,083 ("the '083 Patent") and 8,510,407 ("the '407 Patent") - and included additional detail
regarding Plaintiffs allegations of direct infringement of the '545 Patent. (See, e.g., D.I. 15 ,r,r 1415, 22-24). The First Amended Complaint included allegations of direct infringement of the two
new patents, as well as allegations of induced infringement of the '545, '083 and '407 Patents
(collectively, "the Patents-in-Suit"). (See D.I. 15
,r,r 25-29,
32, 38, 44). On July 11, 2018,
Defendants filed the present motion to dismiss, claiming that the First Amended Complaint fails
to plausibly allege direct infringement of the '545 Patent, and that it also fails to plausibly allege
induced infringement of any of the three Patents-in-Suit. (See D.I. 17 & 18).
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II.
LEGAL STANDARDS
In ruling on a motion to dismiss under Rule l 2(b)(6), the Court must accept all well-pleaded
factual allegations in the complaint as true and view them in the light most favorable to the
plaintiff. See Mayer v. Belichick, 605 F.3d 223, 229 (3d Cir. 2010); see also Phillips v. Cnty. of
Allegheny, 515 F.3d 224, 232-33 (3d Cir. 2008). "[A] court need not 'accept as true allegations
that contradict matters properly subject to judicial notice or by exhibit,' such as the claims and the
patent specification." Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 913
(Fed. Cir. 2017) (quoting Anderson v. Kimberly-Clark Corp., 570 F. App'x 927, 931
(Fed. Cir. 2014)). Nor is the Court required to accept as true bald assertions, unsupported
conclusions or unwarranted inferences. See TriPlay, Inc. v. WhatsApp Inc., C.A. No. 13-1703LPS-CJB, 2018 WL 1479027, at *3 (D. Del. Mar. 27, 2018). Dismissal under Rule 12(b)(6) is
only appropriate if a complaint does not contain "sufficient factual matter, accepted as true, to
'state a claim to relief that is plausible on its face."' Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
(quoting Bell At!. Corp. v. Twombly, 550 U.S. 544, 570 (2007)); see also Fowler v. UPMC
Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). This plausibility standard obligates a plaintiff to
provide "more than labels and conclusions, and a formulaic recitation of the elements of a cause
of action." Twombly, 550 U.S. at 555. Instead, the pleadings must provide sufficient factual
allegations to allow the Court to "draw the reasonable inference that the defendant is liable for the
misconduct alleged." Iqbal, 506 U.S. at 678.
III.
DISCUSSION
A.
Plaintiff's Claims of Direct Infringement of the '545 Patent
In the First Amended Complaint, Plaintiff alleges that various of Defendants' products
directly infringe at least claims 1-2, 9-10, 12 and 13 the '545 Patent, all of which are method
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claims. (See D.I. 15 ,r 32). As to the Lenovo Defendants, Plaintiff identifies the following accused
products: "Lenovo ThinkPad, Yoga, Think.Centre, IdeaCentre, ideapad, Think.Station, Legion and
Flex computers, including the Lenovo ThinkPad, and Lenovo YogaBook, YogaTab, Tab, Tab 3,
Tab 4, ThinkPad Tablet, MIIX, Phab 2 and Phab 2 Pro mobile devices." (Id
,r
19). As to
Defendant Motorola Mobility, Plaintiff identifies "Motorola Z, X, G, E and Droid family mobile
phones, including the Motorola moto z smartphone" as the products accused of infringing the '545
Patent. (Id
,r 20).
According to Plaintiff, each of these products (collectively, "the Accused
Devices") "make[s] extensive use of apps and/or widgets[] and infringe the patents-in-suit." (Id
,r,r 19, 20).
By way of example, Plaintiff maps the Lenovo YogaBook onto claim 1 of the '545
Patent, alleging that use of various applications (e.g., MSN weather app, podcast app) on the
YogaBook results in performance of each and every limitation of claim 1. (Id
,r,r 22-24). 1
Defendants argue that they cannot be liable for direct infringement of the asserted claims
of the '545 Patent based on certain activities. Every claim in the '545 Patent is a method claim
and, according to Defendants, "making, selling, or offering for sale accused devices that are
allegedly used by customers to practice the steps of the '545 patent is not infringing conduct as a
matter oflaw." (D.I. 18 at 6; see also '545 Patent at Claims 1-21). As to the allegations of direct
infringement by "use" of the Accused Devices, Defendants argue that the First Amended
Complaint does not include factual allegations that plausibly support the inference that Defendants
actually use the YogaBook (or any Accused Device) in a way that performs every step of the
Defendants referred to Lenovo Holding Company, Inc., Lenovo (United States) Inc. and
Motorola Mobility LLC collectively as "Lenovo." (D.I. 18 at 1). The Court therefore
views the allegations as to the Lenovo YogaBook as equally applicable to Defendant
Motorola Mobility.
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method in claim 1 of the '545 Patent. (D.I. 25 at 2-3). Rather, in Defendants' view, the allegations
are simply a formulaic recitation of the elements of a claim of direct infringement. (Id. at 2).
Liability for direct infringement arises under 35 U.S.C. § 271(a) when a party, without
authorization, "makes, uses, offers to sell, or sells any patented invention, within the United States
or imports into the United States any patented invention during the term of the patent." The
activities set forth in § 271(a) do not result in direct infringement unless the accused product
embodies the complete patented invention. See Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d
1246, 1252 & n.2 (Fed. Cir. 2000). Therefore, to state a claim of direct infringement sufficient to
withstand a motion to dismiss, a plaintiff must plead facts that plausibly suggest that the accused
product meets each limitation of the asserted claim(s). See TM! Sols. LLC v. Bath & Body Works
Direct, Inc., C.A. No. 17-965-LPS-CJB, 2018 WL 4660370, at *9 (D. Del. Sept. 28, 2018). Where,
as here, the asserted claims are method claims, it is well-established that direct infringement exists
only where there is performance of every step of the claimed method. See Meyer Intellectual
Props. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1366 (Fed. Cir. 2012) ("[D]irect infringement of a
method claim requires a showing that every step of the claimed method has been practiced.").
Here, the Court agrees with Defendants that making, selling, offering to sell or importing
the Accused Devices cannot - as a matter of law - constitute direct infringement of the claims of
the '545 Patent within the meaning of§ 271(a). Each of the claims is directed to a computerimplemented method of obtaining and displaying content over a computer network, and the law is
clear that direct infringement of a method claim requires performance of every claimed step - not
merely the manufacture or sale of a device capable of performing those steps. See, e.g., Ormco
Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) ("Method claims are only
infringed when the claimed process is performed, not by the sale of an apparatus that is capable of
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infringing use."); Moba, B. V. v. Diamond Automation, Inc., 325 F.3d 1306, 1313 (Fed. Cir. 2003)
("The sale or manufacture of equipment to perform a claimed method is not direct infringement
within the meaning of 35 U.S.C. § 271(a)."). Because there is no set of facts that could plausibly
support a claim of direct infringement of the '545 Patent based on Defendants making, selling,
offering to sell or importing the Accused Devices,2 the Court will dismiss those claims. See Neitzke
v. Williams, 490 U.S. 319, 327 (1989) ("Rule 12(b)(6) authorizes a court to dismiss a claim on the
basis of a dispositive issue oflaw.").
The allegations regarding "use" within the meaning of§ 27l(a), however, are a different
matter. The Court does not agree with Defendants that the allegations in the First Amended
Complaint fail to pass muster under Iqbal and Twombly. Plaintiff specifically identifies a number
of Defendants' products that allegedly infringe the asserted claims of the '545 Patent when used
in combination with certain applications. (See D.I. 15 ,r,r 19, 20). As an example, Plaintiff singles
out one Accused Device (i.e., the Lenovo Y ogaBook) and goes through each limitation of claim 1
to show how use of the Y ogaBook in conjunction with applications would plausibly result in
performance of all the claimed steps. (Id.
Accused Devices. (See, e.g., id.
,r,r 22-24).
,r,r 19, 20, 32).
And Plaintiff alleges that Defendants use the
Nevertheless, Defendants argue that Plaintiffs
claim must fail because there are no facts pleaded to support an inference that Defendants actually
use the YogaBook in a manner that infringes claim 1 of the '545 Patent (or any other claim).
(See D.I. 25 at 3 ("Notably, DoDots's recitation of how each limitation of claim 1 of the '545
patent is met speaks only of how a product (Yogabook) meets the limitations, without alleging that
Lenovo performs any of the required steps, whether through its 'own use' or otherwise.")). But
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Plaintiff does not seriously dispute this, instead focusing its opposition to .Defendants'
motion on the allegations in the First Amended Complaint of "use" within the meaning of
§ 271(a). (See D.I. 23 at 1-2).
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Plaintiff does allege that Defendants use the Accused Devices (see D.I. 15 ,r,r 19, 20, 32) and that
that use purportedly results in performance of all the steps of claim 1 (see id.
,r,r 22-24).
This is
sufficient to put Defendants on notice as to how their use of the YogaBook constitutes direct
infringement of claim 1. 3 See, e.g., Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256,
1260 (Fed. Cir. 2018) (finding claim of direct infringement sufficiently pled to "provide
[defendants] fair notice of infringement" where complaint specifically identified accused products
and alleged "using" of accused products that met "each and every limitation" of at least one claim).
Thus, the Court finds that Plaintiff adequately alleges direct infringement of the '545 Patent based
on Defendants' use of the Accused Devices.
B.
Plaintiff's Claims of Induced Infringement of the Patents-in-Suit
The First Amended Complaint includes allegations that Defendants indirectly infringe "one
or more claims" of each of the Patents-in-Suit. (See D.I. 15
,r,r
32, 38, 44). As to induced
infringement, Plaintiff alleges:
As alleged below, Defendants induce infringement of the Patents-in-Suit by their
customers, and intend to do so, through their marketing materials, brochures,
product manuals,
and other materials such as their website,
https://www.lenovoappexplorer.com/en_ us/, with knowledge of the Patents-in-Suit
and their customers' infringement of them.
(Id.
,r
29).
The First Amended Complaint does not include any other theories of indirect
infringement liability and there are no further allegations on inducement. 4
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As to the type or scope of any use by Defendants, Plaintiff is not required to prove its case
at the pleading stage. See In re Bill of Lading Transmission & Processing Sys. Patent
Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012). It is not implausible that Defendants perform
internal testing of the YogaBook that results in performance of all the steps in claim 1, and
Plaintiff would have no insight into Defendants' internal activities at the pleading stage.
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Plaintiff does not identify whether its indirect infringement allegations stem from § 271 (b)
or another subsection - in fact, Plaintiff alleges that Defendants indirectly infringe under
§ 271(a). (See, e.g., D.I. 15 ,r 32 ("Defendants make, use, sell, offer for sale, supply, and/or
distribute within the United States and/or import and/or export the Accused Devices and
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Defendants argue that Plaintiff's allegations of inducement5 are conclusory and do not
include the necessary elements to support a claim of inducement. (D.I. 18 at 6-7). Induced
infringement under § 271(6) requires that "the alleged inducer knew of the patent, knowingly
induced the infringing acts, and possessed a specific intent to encourage another's infringement of
the patent." Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009). To give
rise to inducement liability, the accused infringer must know that the induced acts constitute
infringement of another's patent. Global-Tech Appliances, Inc. v. SEES.A., 563 U.S. 754, 766
(2011). Therefore, to state a claim of inducement sufficient to withstand a motion to dismiss, a
plaintiff must plead facts that plausibly support an inference that the accused inducer "specifically
intended [another] to infringe the [patent] and knew that the [induced] acts constituted
infringement." Bill ofLading, 681 F.3d at 1339. A plaintiff must also plead facts that support an
inference that an underlying act of direct infringement has occurred. See id at 1336; see also
Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004) ("There can be
no inducement or contributory infringement without an underlying act of direct infringement.").
Defendants argue that Plaintiff does not adequately plead at least the knowledge and
specific intent elements necessary to support a claim of inducement. (See D .I. 18 at 7-8). As to
the requisite knowledge of infringement, Defendants explain that Plaintiff's allegations are limited
to two statements: "Defendants induce infringement ... with knowledge of the Patents-in-Suit and
thus directly and/or indirectly infringe the '545 patent under 35 U.S.C. § 271 (a)."
(emphasis added))). It is unclear to the Court how a defendant can indirectly infringe a
patent under § 271(a) given that that section is concerned with acts that constitute direct
infringement of a patent.
5
Defendants assert that the allegations of indirect infringement in the First Amended
Complaint are limited to inducement (D.I. 18 at 6), and Plaintiff does not contest this
(D.I. 23 at 3-4). The Court agrees that the only theory of indirect liability pleaded in the
First Amended Complaint is induced infringement.
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their customers' infringement of them" (D .I. 15
the Patents-in-Suit (id.
,r,r 34, 40,
,r 29) and "Defendants are on notice" of each of
46). (See D.I. 18 at 7). In Defendants' view, because these
allegations are unsupported by any factual assertions, they are insufficient to plausibly suggest that
Defendants have acted with the requisite knowledge of infringement for inducement liability.
(D.I. 18 at 7-8). As to specific intent, Defendants argue that Plaintiffs allegation is "no morethan
a regurgitation of the elements of inducement" and that the cited Lenovo website fails to add any
plausible support to a claim that Defendants specifically intend to induce infringement of the
Patents-in-Suit. (D.I. 18 at 8). According to Defendants, Plaintiff does not identify any particular
statement or location within that website that reasonably supports an inference that Defendants
"acted with the requisite knowledge or intent to induce infringement." (Id. at 8).
Here, the Court agrees with Defendants that the First Amended Complaint fails to state a
claim of induced infringement.
Plaintiffs allegations regarding induced infringement are
essentially contained in Paragraph 29 of the First Amended Complaint, and provide merely a
formulaic recitation of the elements of an inducement claim. The Court is unable to discern
whether Plaintiff is attempting to plead inducement based on pre-suit conduct, or whether
Plaintiffs allegations of inducement are limited to activities after the filing of the original
complaint (or later).
deficient.
In any case, however, Plaintiffs allegations regarding knowledge are
There are no factual allegations that suggest Defendants possessed the requisite
knowledge of infringement of any of the Patents-in-Suit prior to filing the original complaint.
See HSM Portfolio LLC v. Fujitsu Ltd., C.A. No. 11-770-RGA, 2012 WL 2580547, at *1 (D. Del.
July 3, 2012) ("Stating that the defendant was on notice of a patent as of a certain date is
insufficient to provide a factual basis for alleging knowledge [to support a claim of inducement].").
Nor does Plaintiff plausibly allege (or even state) that Defendants have knowledge of their
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customers' infringement based on the filing of the original complaint (which was limited to
allegations of direct infringement of the '545 Patent) or the now-operative complaint. Simply put,
the First Amended Complaint does not adequately plead that Defendants possessed the requisite
knowledge of infringement at any time to support a claim of inducement.
As to specific intent to induce infringement, Plaintiffs allegations again fall short. On this
element, the only allegation in the First Amended Complaint is that "Defendants induce
infringement of the Patents-in-Suit by their customers, and intend to do so, through their marketing
materials, brochures, product manuals, and other materials such as their website,
https://www.lenovoappexplorer.com/en_us/ . . . . "
(D.I. 15
1 29).
Although Plaintiff cites
Defendants' website as support for its allegation, it does so generically and does not identify any
particular statement or material that plausibly suggests Defendants intend to induce infringement
of the Patents-in-Suit. The Court has visited the website and is unable to find any instruction,
direction or encouragement that would reasonably support such an inference. Moreover, for
Defendants' marketing activities to plausibly suggest a specific intent to induce infringement, there
must be knowledge of the customers' infringement (which Plaintiff fails to adequately plead).
See ReejEdge Networks, LLC v. Juniper Networks, Inc., 29 F. Supp. 3d 455, 459 (D. Del. 2014)
("[M]arketing activities are not sufficient to constitute induced infringement unless the marketing
activities are coupled with actual knowledge of the patents-in-suit and awareness that the accused
products infringe the patent-in-suit.").
Plaintiffs allegations of specific intent are therefore
insufficient.
Because the First Amended Complaint does not plausibly allege that Defendants possess
the requisite knowledge and specific intent to induce infringement, Plaintiff has failed to state a
claim of inducement for the Patents-in-Suit.
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C.
Leave to Further Amend the Complaint
Having found that Plaintiff has failed to adequately plead induced infringement in the First
Amended Complaint, the Court now turns to Plaintiffs request for an opportunity to amend its
pleading to cure the deficiencies. (See D.I. 23 at 3-4). Defendants argue that "this is [Plaintiff]'s
second bite at the apple" and any further attempt to amend would be futile. (D.I. 18 at 9; see also
D.I. 25 at 6). Although the pleading before the Court is an amended complaint, the original
complaint did not have claims dismissed under Rule 12(b)(6). Instead, Plaintiff amended its
original complaint pursuant to Rule 15 (a)( 1)(B) in response to Defendants' first motion to dismiss.
(See D.I. 1, 9, 15). Moreover, the First Amended Complaint added two new patents to the case
and included allegations of induced infringement for the first time - i.e., the same allegations that
the Court finds deficient here. (Compare D.I. 1 ,r 22 (alleging only direct infringement of the '545
Patent), with D.I. 15 ,r,r 32, 38, 44 (introducing allegations of indirect infringement of the Patentsin-Suit)). Because Rule 15(a)(2) requires that leave to amend be freely granted "when justice so
requires," and because this is the first time that a court has found Plaintiffs allegations deficient,
Plaintiff will be given leave to file a further amended complaint with respect to induced
infringement. 6
IV.
CONCLUSION
For the foregoing reasons, Defendants' motion to dismiss (D.I. 17) is GRANTED-IN-
PART and DENIED-IN-PART. An appropriate order will follow.
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That being said, the Court does not grant leave to amend with respect to Plaintiffs claims
of direct infringement of the '545 Patent under § 271(a) based on Defendants' making,
selling, offering to sell or importing the Accused Devices. The law is clear that the method
claims of the '545 Patent cannot be infringed by the manufacture, sale, offer for sale or
importation of the Accused Devices, and no facts could be pleaded to state a claim of direct
infringement based on these activities. Amendment would therefore be futile, and those
claims are dismissed with prejudice.
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