Aegis 11 S.A. v. Netgear, Inc.
MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 8/30/2021. Associated Cases: 1:19-cv-01162-RGA, 1:19-cv-01163-RGA(nms)
Case 1:19-cv-01162-RGA Document 35 Filed 08/30/21 Page 1 of 5 PageID #: 829
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AEGIS 11 S.A.,
Civil Action No. 19-1162-RGA
AEGIS 11 S.A.,
Civil Action No. 19-1163-RGA
Timothy Devlin, DEVLIN LAW FIRM LLC, Wilmington, DE,
Attorney for Plaintiff.
Steven J. Balick, Andrew C. Mayo, ASHBY & GEDDES, Wtlmington, DE; Kent E. Baldauf, Jr.,
Bryan P. Clark, THE WEBB LAW FIRM, Pittsburgh, PA,
Attorneys for Defendants Netgear, Inc. and Roku, Inc.,
Case 1:19-cv-01162-RGA Document 35 Filed 08/30/21 Page 2 of 5 PageID #: 830
Before the Court is Defendants' Partial Motion to Dismiss for Failure to State a Claim.
(D.I. 29; C.A. No. 19-1163, D.I. 27). I have considered the parties' briefing. (D.I. 30, 32, 33) 1.
In substantially similar complaints, Plaintiff alleged that Defendants Netgear and Roku
infringed U.S. Patent Nos. 6,839,553 ("the '553 Patent"), 9,848,443 ("the '443 Patent"), and
9,584,200 ("the '200 Patent"). (D.I. 1).
Defendants filed a motion to dismiss for failure to state a claim, arguing that the '535
patent is not directed to patent-eligible subject matter. (D.I. 10). I referred the motion to a
Magistrate Judge who issued a Report and Recommendation recommending that Defendants'
motion be granted. (D.I. 17).
The Magistrate Judge analyzed the '553 Patent and its Claim 1 under the two-step test set
forth in Alice Corporation v. CLS Bank International. 573 U.S. 208 (2014). The Magistrate
Judge determined that Claim 1 of the '553 Patent "was directed to the abstract idea of generating
and using random numbers for the purpose of mutual authentication." (D.I. 17 at 7). The Report
found, "Claim 1 describes the exchange of random numbers between the mobile station and the
wireless communication network without a recitation of steps or rules for generating the random
numbers or explaining how those random numbers achieve the claimed mutual authentication."
(Id. at 10 (citing '553 Patent at col 8:44-58)). With this determination in mind, the Magistrate
Judge concluded that Claim 1 "contains only functional, results-oriented limitations that offer no
concrete solution to the problem of mutual authentication." (Id. at 11). Claim 1 thus "amounts to
an abstract idea. (Id.). The Report and Recommendation also determined that ''the efficiencies
I cite only to the 19-1162 docket, unless otherwise specified. The rulings here apply to the same
briefmg as filed in this case and C.A. No. 19-1163-RGA.
Case 1:19-cv-01162-RGA Document 35 Filed 08/30/21 Page 3 of 5 PageID #: 831
allegedly gained by combining these separate authentication steps into a mutual authentication
process do not render the claim patent-eligible where, as here, claim 1 recites only results-based,
functional language without articulating how to achieve the stated goal of mutual authentication
in a non-abstract way." (Id. at 9).
The Report and Recommendation proceeded to Alice Step Two and concluded, "[C]laim
1 of the '553 patent lacks an inventive concept that would otherwise render it patent eligible."
(Id. at 16). This conclusion was based on findings that "one-way authentication protocols and the
associated network elements required for the authentication process were known, as was the
combination of the recited elements." (Id. at 15; see also id. at 6-14). And, the Magistrate Judge
stated, "The added efficiencies allegedly gained through the mutual authentication process do not
amount to an inventive concept because they result from the application of the abstract idea
itself." (Id. at 16). As the '553 Patent was directed to an abstract idea and lacked an inventive
concept, the Magistrate Judge recommended dismissal of Count I of the Complaint. (Id.).
I adopted the Report and Recommendation over Plaintiff's objections and granted
Defendants' motion to dismiss without prejudice. (D.I. 20).
Plaintiff filed a First Amended Complaint. (D.I. 27). The First Amended Complaint
asserts a fourth patent, U.S. Patent No. 9,350,434 ("_the '434 Patent") and contains new
allegations regarding Defendants' alleged infringement of the '553 Patent. (Id. at 6, 8-9, 20-22).
Defendants filed the instant motion to dismiss Count I of the First Amended Complaint for
failure to state a claim. (D.1. 29).
Plaintiff's First Amended Complaint contains eight new paragraphs with allegations
concerning the '553 Patent. (D.I. 27 at ,r,r 29-30, 35-40).
Case 1:19-cv-01162-RGA Document 35 Filed 08/30/21 Page 4 of 5 PageID #: 832
Plaintiffs new paragraphs allege that at the time of the inventions of the '553 Patent, "it
was not common to have shared secret mutual authentications," and "OTAP A ["Over-the-Air
Parameter Administration"] was still little-known." (D.I. 27 at ,r,r 29-30). Further, the new·
allegations tout the supposed advantages and improved methods of the '553 Patent. (Id at ,r,r 3540). Specifically, the First Amended Complaint provides that the '553 Patent "teaches improved
methods for managing operational parameters in mobile stations in wireless networks," "is itself
innovative," and provides "advantages" over prior art methods. (Id).
These allegations do not resolve the issues that the Magistrate Judge identified in the
Report and Recommendation. The Report and Recommendation concluded, "[C]laim 1 recites
only results-based, functional language without articulating how to achieve the stated goal of
mutual authentication in a non-abstract way." (D.I. 17 at 9). Plaintiffs additional allegations do
not change the fact that Claim 1 consists of "results-based, functional language" that does not
articulate "how to achieve the stated goal of mutual authentication in a non-abstract way." (See
id). Regardless of Plaintiffs contentions pertaining to the advantages of the '553 Patent's
teachings or how well-known mutual authentication was, the new allegations do not change the
language of the patent, which the Report and Recommendation determined lacked the
'"specificity required to transform a claim from one claiming only a result to one claiming a way
of achieving it."' (Id at 10 (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
As the allegations in Plaintiffs First Amended Complaint do not resolve the issues
identified in the Report and Recommendation (which I adopted), I conclude that the '553 Patent
is directed to patent ineligible subject matter. Therefore, Defendant's Partial Motion to Dismiss
Case 1:19-cv-01162-RGA Document 35 Filed 08/30/21 Page 5 of 5 PageID #: 833
for Failure to State a Claim (D.I. 29; C.A. No. 19-1163, D.I. 27) is GRANTED and Count I of
the First Amended Complaint is DISMISSED with prejudice.
I will enter a separate order.
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