Ortiz & Associates Consulting LLC v. Microsoft Corporation

Filing 33

MEMORANDUM OPINION AND ORDER Signed by the Honorable Robert M. Dow, Jr on 7/19/2021. Emailed notice(cdh, )

Case: 1:19-cv-08262 Document #: 33 Filed: 07/19/21 Page 1 of 7 PageID #:168

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
ORTIZ & ASSOCIATES
CONSULTING LLC,
Plaintiff,
v.
MICROSOFT CORPORATION,

)
)
)
)
)
)
)
)
)

Case No. 19-cv-8262
Judge Robert M. Dow, Jr.

Defendant.
MEMORANDUM OPINION AND ORDER
Ortiz & Associates Consulting LLC (“Plaintiff”) brought this patent infringement case
against Microsoft Corporation (“Defendant”). Defendant moved to dismiss. [26]. For the reasons
below, the Court grants Defendant’s motion [26] and dismisses Plaintiff’s complaint without
prejudice. The Court gives Plaintiff leave to file an amended complaint no later than August 20,
2021, if it can do so consistent with this opinion and Federal Rule of Civil Procedure 11. This
case is set for a telephonic status hearing on August 27, 2021 at 9:00 am. Participants should use
the Court’s toll-free, call-in number 877-336-1829 and passcode 6963747.
I.

Background1
Plaintiff is the exclusive owner of United States Patent No. 9,147,299 (the “’299 patent”).

[25, at ¶ 7]. Plaintiff alleges that Defendant directly infringes claim one of this patent through
software included on its Wireless Display Adapter and/or handheld wireless devices such as the
Microsoft Surface Go 2. Claim one of the ’299 patent includes four steps, and provides:
A method of brokering video data between handheld wireless devices and publicly
and privately available data rendering devices in the form of at least one of a video
monitor and multimedia projector for rendering of the video data at a selected
1

The Court accepts as true all of Plaintiff’s well-pleaded factual allegations and draws all reasonable
inferences in Plaintiff’s favor. Killingsworth v. HSBC Bank Nev., N.A., 507 F.3d 614, 618 (7th Cir. 2007).

Case: 1:19-cv-08262 Document #: 33 Filed: 07/19/21 Page 2 of 7 PageID #:169

rendering device, comprising:
[1] receiving a request in a wireless data communication network from a wireless
device (WD) to locate at least one data rendering device (DRD) in the form of
at least one of a video monitor and multimedia projector for rendering video data
selected at said WD, said request including WD location information;
[2] said wireless data communication network identifying a physical location,
operational readiness and rendering capabilities of at least one DRD for said WD
based on the WD location information;
[3] said wireless data communication network providing said WD with location
information of at least one accessible DRD for selection by said WD; and
[4] receiving from said WD via said wireless data communication network a
selection of a DRD by entry of authorization code at a user interface on at least
one of said WD said DRD once the DRD is physically located, and video data
selected from at least one of said WD or a server accessible by said WD for
rendering at said DRD, wherein verification of the authorization code entered
on the user interface causes said DRD to retrieve and render the video data.
[26-2].
Defendant “brokers video data between handheld wireless devices (for example a
Microsoft Surface Go 2) and data rendering devices (a television).” [25, at ¶ 9a]. Plaintiff alleges
that Defendant performs the first step as follows: “Microsoft owns software that Microsoft licenses
to end users. Through this software, when the user opens his or her Surface Go 2 and the[n] selects
the Wireless Display Adapter, Microsoft performs this step * * * .” [Id., at ¶ 9b]. Plaintiff alleges
that Defendant performs the second and third step when “[t]he software that Microsoft owns and
licenses to the user of Surface Go 2 identifies the user’s television to which the Wireless Display
Adapter is connected as ready to be connected to the Surface Go 2 for screen sharing.” [Id., at
¶ 9c]. Plaintiff alleges that Defendant performs the fourth step in one of two ways. First, when
“[t]he user of the Microsoft Surface Go 2 selects an icon indicating his or her television is ready
to be connected to the Microsoft Surface Go 2 for screen sharing.” [Id., at ¶ 9d]. And alternatively,
Plaintiff alleges that Defendant’s “software performs this step through a direct communication
2

Case: 1:19-cv-08262 Document #: 33 Filed: 07/19/21 Page 3 of 7 PageID #:170

between the Surface Go 2 and the Bravia television.” [Id., at ¶ 9e]. In this alternative method, a
pin number appears on the Surface Go 2 and a user is prompted to press “Connect” if the pin
displayed on the Bravia television matches the pin on the Surface Go 2. [Id.]. Defendant moved
to dismiss Plaintiff’s complaint for failure to state a claim. [See 26].
II.

Legal Standard
To survive a Rule 12(b)(6) motion to dismiss for failure to state a claim upon which relief

can be granted, the complaint typically must comply with Rule 8(a) by providing “a short and plain
statement of the claim showing that the pleader is entitled to relief,” Fed. R. Civ. P. 8(a)(2), such
that the defendant is given “fair notice of what the * * * claim is and the grounds upon which it
rests.” Bell Atl. Corp v. Twombly, 550 U.S. 544, 555 (2007) (alteration in original) (quoting Conley
v. Gibson, 355 U.S. 41, 47 (1957)). “A pleading that offers ‘labels and conclusions’ or ‘a formulaic
recitation of the elements of a cause of action will not do.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (quoting Twombly, 550 U.S at 555). In determining whether the complaint meets this
standard, the Court accepts as true all of Plaintiff’s well-pleaded factual allegations and draws all
reasonable inferences in Plaintiff’s favor. Killingsworth, 507 F.3d at 618.
III.

Analysis
“Section 271(a) of Title 35 sets forth the requirements of a claim of direct patent

infringement: ‘whoever without authority 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 therefor, infringes the patent.’” Ricoh Co. v. Quanta Computer Inc., 550
F.3d 1325, 1334 (Fed. Cir. 2008). Claim 1 of the ’299 patent is a method claim. “Infringement of
a method claim ‘occurs when a party performs all of the steps of the process.’” Id. at 1333 (quoting
BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1379 (Fed.Cir.2007)). In other words, “[a]

3

Case: 1:19-cv-08262 Document #: 33 Filed: 07/19/21 Page 4 of 7 PageID #:171

method claim is directly infringed when someone practices every step of the patented method. In
order to prove induced infringement, the patentee must show that the alleged infringer performs,
or induces another party to perform, every single step in the method.” Ericsson, Inc. v. D-Link
Sys., Inc., 773 F.3d 1201, 1219 (Fed. Cir. 2014) (internal citations omitted). Thus, to state an
infringement claim here, Plaintiff must allege that Defendant practices every step of the process
described by claim 1 of the ’299 patent. Defendant argues that Plaintiff failed to do so.
First, Defendant notes that Plaintiff alleges that its software infringes the ’299 patent and
submits that supplying software to a consumer does not make it a direct infringer. [26, at 7–8].
To Defendant’s point, Plaintiff argues that “[t]he software, not the device, performed the method
steps.” [31, at 11]. Further, the Federal Circuit has explained that “a process is nothing more than
the sequence of actions of which it is comprised.” Ricoh Co., 550 F.3d at 1335 (quoting NTP, Inc.
v. Rsch. In Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005), abrogated on other grounds by
Zoltek Corp. v. United States, 672 F.3d 1309, 1313 (Fed. Cir. 2012)). “In contrast, software is not
itself a sequence of actions, but rather it is a set of instructions that directs hardware to perform a
sequence of actions.” Id. Thus, software alone cannot infringe a method claim because it is merely
a set of instructions, and “the actual carrying out of the instructions is that which constitutes a
process within the meaning of § 271(a).” Id.; see also WiNet Labs, LLC v. Motorola Mobility,
LLC, 2020 WL 5265558, at *2 (N.D. Ill. Aug. 4, 2020), vacated and remanded on other grounds,
2021 WL 1343535 (Fed. Cir. Apr. 12, 2021) (describing as a “legal impossibility” the plaintiff’s
argument “that the software alone infringes the method claim”).
Plaintiff attempts to distinguish Ricoh by explaining that he “does not allege that
Microsoft’s sale of the software is an infringing act” and instead he “alleges that Microsoft’s use
of the software infringes the ’299 patent.” [31, at 12 (emphasis added)]. This suggests that it is

4

Case: 1:19-cv-08262 Document #: 33 Filed: 07/19/21 Page 5 of 7 PageID #:172

not the software itself that infringes the method claim; rather Defendant infringes the method claim
when it uses the software. However, nothing in the complaint suggests that Defendant uses the
software. Instead, the complaint alleges that Defendant licenses the software to end users and that
the end users implement the software. [25, at ¶ 9b–d]. And the Federal Circuit has explained that
“none of [its] decisions have found direct infringement of a method claim by sales of an end user
product which performs the entire method.”2 Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201,
1222 (Fed. Cir. 2014); see also WiNet Labs, LLC, 2020 WL 5265558, at *2 (“[S]imply claiming
that [the defendant] ‘controls’ the software is not enough, particularly when it is obvious that end
users are the ones using the [software].”); Sentius Int’l, LLC v. Apple Inc., 2020 WL 2850286, at
*4 (N.D. Cal. June 2, 2020) (“Merely providing software to an end-user device does not constitute
‘use’ of that device.”); cf. Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022–
23 (Fed. Cir. 2015) (explaining that an entity can be “responsible for others’ performance of
method steps in two sets of circumstances: (1) where that entity directs or controls others’
performance, and (2) where the actors form a joint enterprise”)).
In arguing that it nevertheless stated a claim for direct infringement, Plaintiff relies on SiRF
Tech., Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). There, the
defendant argued that it did not directly infringe method claims related to GPS devices because
the end users must initiate the process. Id. at 1329. The court rejected this argument because the
steps of the method claim were either (1) executed either by a satellite controlled by the accused
infringers or (2) were automatically performed by the accused GPS products. Id. at 1329–1331;
see also Ericsson, Inc., 773 F.3d at 1221 (describing SiRF in this way). Any actions performed by
the end user were not part of the claim. SiRF Tech., Inc., 601 F.3d at 1331. The Federal Circuit
2

Nothing in Plaintiff’s complaint or brief suggests that that fact that Defendant licensed the software for
use instead of selling it for use impacts the analysis.

5

Case: 1:19-cv-08262 Document #: 33 Filed: 07/19/21 Page 6 of 7 PageID #:173

later described SiRF as finding that, under those facts, “it was the accused infringers that performed
all the steps required for direct infringement, not the customers who possessed the GPS products.”
Ericsson, Inc., 773 F.3d at 1221. Here, in contrast, according to Plaintiff’s own allegations [25, at
¶ 9b–9d], it is the end user who controls the devices. And the Federal Circuit has declined to
expand SiRF in the manner Plaintiff’s argument requires. See Ericsson, Inc., 773 F.3d 1221–22
(“Our decision in SiRF is not applicable here because all of the steps of the method in claims 1 and
2 of the ’215 patent are performed on the end product, which is controlled by a third party. Unlike
the method in SiRF, there are no steps automatically performed by equipment controlled by [the
Defendant].” (internal citation omitted)); Koninklijke Philips N.V. v. Zoll Med. Corp., 656 F. App’x
504, 521 (Fed. Cir. 2016) (restating Ericsson’s treatment of SiRF and “again declin[ing] to extend
the scope of direct infringement”; finding no direct infringement because all of the steps of the
method claims were performed on devices “wholly out of the control of” the defendant).
Accordingly, Plaintiff’s SiRF argument fails, and its complaint is dismissed without prejudice.3
IV.

Conclusion
For the reasons above, the Court grants Defendant’s motion [26] and dismisses Plaintiff’s

complaint without prejudice. The Court gives Plaintiff leave to file an amended complaint no later
than August 20, 2021, if it can do so consistent with this opinion and Federal Rule of Civil
Procedure 11. This case is set for a telephonic status hearing on August 27, 2021 at 9:00 am.
Participants should use the Court’s toll-free, call-in number 877-336-1829 and passcode 6963747.

3

The Court does not address Defendant’s arguments that the complaint did not adequately allege a wireless
communication network or an authentication code. However, the Court notes that to the extent that these
arguments require construing claim one of the ’299 patent, they may be inappropriate for a motion to
dismiss. See, e.g., Lecat’s Ventriloscope v. MT Tool & Mfg., 2017 WL 1362036, at *4 (N.D. Ill. Jan. 6,
2017) (“The U.S. Court of Appeals for the Federal Circuit has cautioned against construing claim language
to resolve, at the pleading stage, what are effectively non-infringement arguments.”).

6

Case: 1:19-cv-08262 Document #: 33 Filed: 07/19/21 Page 7 of 7 PageID #:174

Dated: July 19, 2021

__________________________
Robert M. Dow, Jr.
United States District Judge

7