Ingeniador, LLC v. Interwoven, Inc. et al

Filing 263

ORDER: Granting 96 Motion to Dismiss; Finding as moot 99 Motion to Dismiss; Granting in part 106 Motion to Dismiss for Lack of Jurisdiction; Finding as moot 110 Motion to Dismiss for Lack of Jurisdiction; Finding as moot 111 Motion to Dismi ss; Finding as moot 114 Motion to Dismiss for Lack of Jurisdiction; Granting 116 Motion to Dismiss for Lack of Jurisdiction; Finding as moot 117 Motion to Dismiss; Finding as moot 137 Motion to Dismiss; Granting in part 139 Motion to Dismiss for Lack of Jurisdiction; Granting 153 Motion to Dismiss; Finding as moot 216 Motion to Strike. Signed by Judge Gustavo A. Gelpi on 5/15/2012. (TC)

IN THE UNITED STATES COURT
FOR THE DISTRICT OF PUERTO RICO

INGENIADOR, LLC,
Plaintiff,
v.

CIV. NO.: 11-1840 (GAG)

INTERWOVEN,
Defendant.

OPINION AND ORDER
Ingeniador, LLC (“Plaintiff”) brings this complaint against
Alfresco Software, Inc. (“Alfresco”), Interwoven, Inc.
(“Interwoven”), Blackboard, Inc. (“Blackboard”), Bridgeline
Digital, Inc. (“Bridgeline”), EMC Corp. (“EMC”), HewlettPackard Co. (“HP”), Informatica Corp. (“Informatica”),
Compulink Management Center, Inc. (“Compulink”), Lexmark

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Page 2

International, Inc. (“Lexmark”), Microsoft Corp. (“Microsoft”),
Nuxeo

Corp.

(“Nuxeo”), Objective

Corp. USA,

Inc.

(“Objective”), Oracle Corp. (“Oracle”), SAP America, Inc.
(“SAP”), SDL Tridion, Inc. (“Tridion”), and SpringCM, Inc.
(“SpringCM”) (collectively “Defendants”), alleging patent
infringement under 35 U.S.C. § 271. Plaintiff seeks to enjoin
Defendants from infringing and profiting from its patent, as
well as to recover damages, attorney’s fees and costs. (See
Docket No. 1 ¶ 1.) The complaint was filed in federal court
based on this court’s federal question jurisdiction, 28 U.S.C. §
1331, and its patent law jurisdiction, 28 U.S.C. § 1338(a). Prior
to this opinion and order, the court granted the dismissal of
Objective (Docket No. 161), SAP (Docket No. 178), Oracle
(Docket No. 224), Microsoft (Docket No. 232), SpringCM
(Docket No. 240), HP (Docket No. 251) and Interwoven

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Page 3

(Docket No. 253). Default judgment was entered against
Bridgeline (Docket No. 235). The remaining parties filed
various motions to dismiss.
Presently before the court are numerous motions to dismiss
for lack of personal jurisdiction, failure to state a claim, and
improper joinder, as well as motions to transfer the case to
other jurisdictions.
I. Background and Procedural History
In its complaint, Plaintiff alleges Defendants infringed on its
patented publishing system for the internet. (See Docket No.
1 ¶ 23.) The U.S. Patent and Trademark Office issued U.S.
Patent No. 6,990,629 (the “629 Patent”) to Schlumberger
Technology

Corporation.

Schlumberger

Technology

Corporation later assigned the 629 Patent to Plaintiff. (See id.
¶ 23.) Plaintiff asserts each defendant sells products that either

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Page 4

directly or indirectly infringe upon the 629 Patent, or
contribute to a third party’s infringement of the 629 Patent.
(See Docket No. 1 ¶¶ 23-39.) As Defendants assert differing
reasons for dismissal, the facts particular to each defendant will
be discussed in the pertinent section.
A. Personal Jurisdiction
Blackboard (Docket No. 106), Interwoven (Docket No. 110),
SpringCM (Docket No. 114), Compulink (Docket No. 116) and
Tridion (Docket No. 139) each filed a motions to dismiss for
lack of personal jurisdiction within the forum of Puerto Rico.
Ingeniador opposed these motions (Docket No. 167). Replies
were filed by Blackboard (Docket No. 185), Interwoven
(Docket No. 187), Compulink (Docket No. 188), Tridion
(Docket No. 190) and SpringCM (Docket No. 191). Ingeniador
filed a sur-reply to all replies except that of Tridion’s (Docket

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Page 5

No. 215). For the reasons stated below the court GRANTS
these motions to dismiss for lack of personal jurisdiction.
B. Failure to State a Claim
Microsoft, HP, EMC, Nuxeo, Informatica, Oracle, SAP, and
Lexmark filed a motion to dismiss for failure to state a claim
(Docket No. 96). That motion was joined by Interwoven
(Docket No. 122) and SpringCM (Docket No. 114). Compulink
(Docket No. 111), Tridion (Docket No. 139), and Alfresco
(Docket No. 153) filed separate motions to dismiss
incorporating similar arguments. These motions were opposed
by Plaintiff (Docket No. 165). Defendants Nuxeo, Informatica,
Oracle, HP, Lexmark, SAP, Microsoft and EMC replied (Docket
No. 182) and Interwoven joined (Docket No. 200). Compulink
and Tridion filed reply briefs (Docket Nos. 186 & 190
respectfully). Plaintiff filed a sur-reply (Docket No. 213). The

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Page 6

court previously ruled it did not have personal jurisdiction
over Interwoven, Compulink, and Tridion. Accordingly, these
motion (Docket Nos. 122, 111, & 139, respectively) are found to
be MOOT. The court GRANTS the motions to dismiss filed by
Microsoft, HP, EMC, Nuxeo, Informatica, Oracle, SAP,
Lexmark, and Alfresco (Docket No. 96).
C. Improper Joinder
EMC filed a motion to dismiss for improper joinder under
Rule 20 (Docket No. 99). The motion was joined by SpringCM
(Docket No. 114) and partially joined by Lexmark (Docket No.
121), Microsoft (Docket No. 107), HP (Docket No. 107),
Informatica (Docket No. 132) and SAP (Docket No. 150).
Blackboard (Docket No. 106), Compulink (Docket No. 117),
Oracle (Docket No. 137) and Tridion (Docket No. 139) also filed
motions to dismiss for improper joinder. Ingeniador filed an

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Page 7

opposition to all such motions (Docket No. 168). Replies were
filed by EMC (Docket No. 184), SpringCM (Docket No. 191),
and Compulink (Docket No. 194). Ingeniador filed a sur-reply
(Docket No. 212). However, Defendants have been dismissed
due to lack of personal jurisdiction or for Plaintiff’s failure to
state a claim. Accordingly, the court finds all motions for
improper joinder to be MOOT.
D. Transfer of Venue
EMC (Docket No. 99), SpringCM (Docket No. 114) and
Compulink (Docket No. 117) filed motions to transfer to the
Northern District of California, the Northern District of Illinois
and the Central District of California, respectively. Plaintiff
opposed all these motions (Docket No. 166). Each defendant
filed a reply brief: EMC (Docket No. 183), SpringCM (Docket
No. 191), and Compulink (Docket Nos. 194 & 195). Plaintiff

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Page 8

filed a sur-reply (Docket No. 211). For the reasons previously
discussed, the court finds the motions to transfer (Docket Nos.
99, 114 & 117) to be MOOT.
II. Personal Jurisdiction
A. Legal Standard
“The Due Process Clause protects an individual’s liberty
interest in not being subject to the binding judgments of a
forum with which he has established no meaningful contacts,
ties, or relations.” Burger King Corp. v. Rudzewicz, 471 U.S.
462, 471-72 (1985) (citing Int’l Shoe Co. v. Washington, 326 U.S.
310, 319 (1945)) (internal quotations marks omitted). A court
is without authority to adjudicate a case when the court does
not have personal jurisdiction over the parties.

See

Marcinkowska v. IMG Worldwide, Inc., 342 Fed. Appx. 632,
635 (Fed. Cir. 2009). Personal jurisdiction comes in two forms:

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Page 9

general and specific. See Nuance Commc’ns, Inc. v. Abbyy
Software House, 626 F.3d 1222, 1230 (Fed. Cir. 2010). When
dealing with patent infringement cases, it is the law of the
Federal Circuit which controls, rather than the law of the
regional Circuit Court. See id. (citing Akro Corp. v. Luker, 45
F.3d 1541, 1543 (Fed. Cir. 1995)).
The plaintiff has the burden of proving the court has
jurisdiction over the defendants. See also Touchcom, Inc. v.
Bereskin & Parr, 574 F.3d 1403, 1410 (Fed. Cir. 2009). When, as
in this case, the parties have not conducted jurisdictional
discovery, the plaintiff must only make a prima facie showing
that the defendants are subject to personal jurisdiction. See
Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1201
(Fed. Cir. 2003). “Personal jurisdiction over an out-of-state
defendant is appropriate if the relevant state’s long-arm statute

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Page 10

permits the assertion of jurisdiction without violating federal
due process.” 3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d
1373, 1376–77 (Fed. Cir. 1998). A federal court is required to
first analyze whether the state’s long-arm statute would
require the defendant to appear in a state court. See Radio Sys.
Corp. v. Accession, Inc., 638 F.3d 785, 788-89 (Fed. Cir. 2011).
If the forum state has jurisdiction over the defendant, then the
the court must then ensure that holding jurisdiction over the
defendant in the forum state does not offend constitutional due
process. See id. Due process requires the court to hold it does
not have jurisdiction if doing so offends the “traditional
notions of fair play and substantial justice.” Int’l Shoe, 326 U.S.
at 316.
In the present case, the court need only determine whether
due process would permit the court to assert jurisdiction over

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Page 11

each defendant because Puerto Rico’s long-arm statute extends
to the limits of constitutional bounds. See Carreras v. PMG
Collins, LLC, 660 F.3d 549, 552 (1st Cir. 2011). Therefore, the
court focuses its analysis on whether the exercise of personal
jurisdiction in this case is constitutionally permissible.
The standard for general in personam jurisdiction is
considerably more stringent than the standard for specific in
personam jurisdiction. See Autogenomics, Inc. v. Oxford Gene
Tech. Ltd., 566 F.3d 1012, 1018 (Fed. Cir. 2009). In order to
have general jurisdiction over a defendant, the court must find
the defendant to have ‘continuous and systematic’ activities in
the forum state. See Marcinkowska, 342 Fed. Appx. at 635
(quoting Helicopteros Nacionales de Colombia, S.A. v. Hall,
466 U.S. 408, 415-16 (1984)).

The existence of property,

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Page 12

offices, or businesses within the forum state supports a finding
of general jurisdiction over a corporation. See Marcinkowska,
342 Fed. Appx. at 635. In Helicopteros, the Supreme Court
found no general jurisdiction in Texas over a foreign company
that sent a representative to Houston, and had purchased
helicopters, spare parts, and accessories from Texas.
Helicopteros, 466 U.S. at 411.

See

The company had sent

representatives to Texas to train as pilots, management and
maintenance personal to receive training, and monies
transferred from a Houston bank account. See id. However,
the company was never authorized to do business in Texas,
never had an agent to accept service of process in Texas, and
never sold a product that reached Texas or even solicited
business from Texas. See id. The Court ultimately held the
Texas court could not assert general jurisdiction over the

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Page 13

company.
Maintaining a website that is not directed at any particular
jurisdiction, is not sufficient to demonstrate general
jurisdiction. See id., at 884 (finding defendant’s website, not
specifically directed at the forum jurisdiction, did not give rise
to general jurisdiction).

Nor does the presence of a few

employees within the forum jurisdiction lead to an automatic
finding of general jurisdiction over a corporation. See Glater
v. Eli Lilly & Co., 744 F.2d 213, 215 (1st Cir. 1984) (holding no
general jurisdiction over corporation with eight sales
representative in forum state).1 Limited sales, representing a

1.

The court notes its use of First Circuit precedent for this point of law
because neither the parties, nor the court, found Federal Circuit
precedent discussing the amount of employees necessary to find
general jurisdiction over an out of state corporation. The First Circuit,
in deciding Glater, heavily relied upon Keeton v. Hustler Magazine,
Inc., 465 U.S. 770 and Helicopteros, both of which constitute binding
Supreme Court precedent.

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small amount of the defendant’s overall sales, is another factor
that weighs against the finding of general jurisdiction. See
Campbell Pet Co. v. Miale, 542 F.3d 879, 884 (Fed. Cir. 2008)
(finding twelve sales over a period of eight years and
representing merely two percent of overall sales to be
insufficient to establish general jurisdiction).
Specific jurisdiction arises when the “cause of action arises
out of or is related to a defendant’s activities in the forum
state.” See Marcinkowska, 342 Fed. Appx. at 635. Therefore,
in order to hold jurisdiction over a defendant, the defendant
must have purposefully established minimum contacts within
the forum state. See Touchcom, Inc. v. Bereskin & Parr, 574
F.3d 1403, 1412 (Fed. Cir. 2009) (citing Burger King, 471 U.S. at
474). In order to do so there must be some showing that “the
defendant purposely avails itself of the privilege of conducting

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Page 15

activities within the forum state.” Hanson v. Denckla, 357 U.S.
235, 253 (1958). The Federal Circuit has outlined a test to
determine whether a district court has specific jurisdiction over
a defendant. The three part test considers,
whether (1) the defendant purposefully directed its
activities at residents of the forum, (2) the claim arises
out of or relates to the defendant’s activities with the
forum, and (3) assertion of personal jurisdiction is
reasonable and fair. Under this test, a court may
properly assert specific jurisdiction, even if the contacts
are isolated and sporadic, so long as the cause of action
arises out of or relates to those contacts. Indeed, a
substantial connection with a forum arising out of a
single act can support jurisdiction.
Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip.
Medico, 563 F.3d 1285, 1297 (Fed. Cir. 2009) (citations omitted)
(internal quotation marks omitted). The Federal Circuit has
further delineated five factors to consider when deciding
whether the exercise of jurisdiction would violate fair play and

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substantial justice: “1) the burden on the defendant, 2) the
interests of the forum state, 3) the plaintiff’s interest in
obtaining relief, 4) the interstate judicial system’s interest in
obtaining the most efficient resolution of controversies, and 5)
the shared interest of the several states in furthering
fundamental substantive social policies.” Deprenyl Animal
Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d
1343, 1355 (Fed. Cir. 2002).
B. Discussion
1. Blackboard
Plaintiff asserts the court has general jurisdiction over
Blackboard and the court’s analysis so reflects. Blackboard
admits to having contacts within Puerto Rico, namely that
Blackboard has one employee based in Puerto Rico out of 2,600
globally and has 16 customers in Puerto Rico, out of 11,224

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Page 17

total. (See Docket No. 185 at 2-3.) In a case where the
defendant has judicially recognized ties with the forum state,
“a variety of factors relating to the particular cause of action
may be relevant.” Glater, 744 F.2d at 215 (citing Rush v.
Savchuk, 444 U.S. 320, 332 (1980)).
Whether this forum has general in personam jurisdiction
over Blackboard is a close call, but in reading the relevant
precedent, this court believes Blackboard has not established
the requisite contacts for the court to assert general jurisdiction
over Blackboard to appear before this court for any cause of
action. Blackboard is not a registered company in Puerto Rico,
and does not have bank accounts or a mailing address in
Puerto Rico. (See Docket No. 106 at 4.) Blackboard only has
one employee in Puerto Rico and 16 clients, representing 0.01%
of their client base. In Helicopteros, the Court required more

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sustained activity in order for a court to hold general
jurisdiction over a foreign corporation. Helicopteros, 466 U.S.
at 411.

Similarly, the Glater court held the presence of

salesmen within the forum was insufficient to establish general
jurisdiction.

See Glater, 744 F.2d at 217.

Without more

continuous and systematic contacts within the jurisdiction, this
jurisdiction does not have general jurisdiction over Blackboard.
Therefore, the court GRANTS Blackboard’s motion to dismiss
at Docket No. 106. As a result, the court find Blackboard’s
motion to dismiss due to misjoinder of parties (Docket No. 106)
to be MOOT.
2. Compulink
Whether the court has personal jurisdiction over
Compulink is a similarly tricky question. Compulink is a
California corporation with nearly all of its business and

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employees located in that state. Plaintiff argues the court has
specific jurisdiction due to Compulink’s use of value added
resellers (“VARs”) that marketed and sold Compulink
products within Puerto Rico. The sales generated from VARs
represents roughly 0.01% of Compulink’s gross revenues since
January 1, 2010. (See Docket No. 116 at 4.) Compulink admits
these sales totaled $2,957 in 2010. (See Docket No. 188-1 at ¶
11.) Compulink no longer uses VARs, terminating their use
months prior to the initiation of this suit. These contacts may
be sufficient to show that Compulink directed its activity
towards the forum.

However, because the court rules

jurisdiction is lacking in prongs two and three of the Federal
Circuit test, the court directly proceeds to those prongs which
are determinative.
Because this is a specific jurisdiction analysis, the alleged

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patent infringement must stem from contacts of Compulink
with the forum. See Radio Sys. Corp. v. Accession, Inc., 638
F.3d 785, 790 (Fed. Cir. 2011).

Plaintiff fails to allege any

patent infringement among Compulink’s contacts within
Puerto Rico. The only contacts within Puerto Rico are the use
of VARs, which Plaintiff fails to allege sold any of the
infringing products.
Keeping in mind that Compulink’s contacts, if sufficient,
are attenuated, court applies the five factors of the Federal
Circuit test to determine whether jurisdiction would be proper
in Puerto Rico. The court finds the factors favor Compulink.
There is a rather heavy burden upon a defendant, that is
almost exclusively based in California, to litigate in Puerto
Rico. Regardless of the federal practice of electronic filing,
Compulink must incur considerable travel for court

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appearances and trial. Puerto Rico, while having an interest in
overseeing this litigation, has no particularly special interest in
this litigation as it involves federal law. Compulink sparsely
used this forum to advertise its products and has since ceased
its operations in Puerto Rico. The third factor seemingly splits
between the two parties. Plaintiff has an interest in litigating
in its home forum, but otherwise has no special interest in
litigating in this forum as federal law applies equally in all
jurisdictions. Factors four and five do not hold such weight so
as to convince the court to find that jurisdiction in this forum
is any more relevant than in Compulink’s home jurisdiction.
On the whole, considering all factors, the court finds that
jurisdiction is lacking over Compulink and GRANTS
Compulink’s motion to dismiss (Docket No. 116). Accordingly,
Compulink’s motions to dismiss for failure to state a claim

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(Docket No. 186) and for misjoinder (Docket No. 194) are
MOOT.
3. Tridion
Tridion simply does not have any demonstrated contacts
within Puerto Rico that allow the court to assert jurisdiction
over it. Tridion neither has offices, nor employees, distributors
or agents in Puerto Rico. (See Docket No. 139 at 5-6.) Plaintiff
relies on Tridion’s interactive website and its clientele as a basis
for demonstrating personal jurisdiction. Both arguments are
unpersuasive.
Accordingly as discussed, the mere presence of a website
does not demonstrate a defendant has purposefully availed
itself of the laws of the jurisdiction. Plaintiff relies upon the
stream of commerce doctrine relied upon by the Court in Asahi
Metal Indus. Co. v. Superior Court of Cal., Solano Cnty., 480

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U.S. 102 (1987), and recently heavily discussed by the Court in
J. McIntyre Machinery, LTD. v. Nicastro, --- U.S. ---, 131 S.Ct.
2780 (2011). In J.McIntyre, the Supreme Court, yet in another
plurality opinion, seemed to clarify that Asahi may only be
used so long as the defendant targeted the forum for its
business.2 This principle may not be used to hold jurisdiction
over a defendant who simply produces products that
eventually arrive in the forum, unless the defendant did more
to purposefully direct the products towards the forum. See J.

2.

The plurality opinion by Justice Kennedy seems to intimate that the
Court is leaning towards requiring a finding the a defendant
specifically targeted a forum in order for a court to find personal
jurisdiction over that defendant. However, “When a fragmented Court
decides a case and no single rationale explaining the result enjoys the
assent of five Justices, the holding of the Court may be viewed as that
position taken by those Members who concurred in the judgments on
the narrowest grounds . . . .” Marks v. United States, 430 U.S. 188, 193
(1977). Therefore, it is the concurring opinion of Justice Breyer, joined
by Justice Alito, that controls this analysis. Justice Breyer’s concurrence
did not join the plurality in this respect, instead Justices Breyer and
Alito would have decided this case on prior precedent such as Asahi.

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McIntyre, 131 S.Ct. at 2792 (Breyer, J., concurring) (requiring,
a “‘regular . . . flow’ or ‘regular course’ of sales in [the forum
or] ‘something more’ such as special state-related design,
advertising, advice, marketing, or anything else” for
jurisdictional purposes).
Guided by these decisions, the court finds it does not have
specific jurisdiction over Tridion. The maintenance of an
interactive website, alone, is not sufficient to establish
purposeful availment in any jurisdiction which has the
internet. See Trintec Indus., Inc. v. Pedre Promotional Prods.,
Inc., 395 F.3d 1275, 1281 (Fed. Cir. 2005) (holding maintenance
of website available to all internet users does not establish
persistent conduct by defendants within the jurisdiction).
However, if Plaintiff had demonstrated its cause of action arose
out of the sale of products from this website to Puerto Rico,

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then the existence of the interactive website might have been
sufficient to hold personal jurisdiction over Tridion. See id. at
1280.
Plaintiff does not allege or demonstrate that residents of
Puerto Rico used this website in order to purchase the
infringing product.

Instead, Plaintiff concludes that

jurisdiction is proper because Puerto Rico is listed as a locality
on the website. Just because a website allows users to access it
from a jurisdiction, and allows users to designate where they
are from when contacting the corporation, does not meet the
threshold for minimum contacts.
Plaintiff’s other argument, that jurisdiction is proper
because Tridion sells to a number of companies who are
uninterested in this litigation, but have a presence within
Puerto Rico, is also without merit. Plaintiff cites no legal

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support that would allow the court to embrace this theory. It
would be strange, if not wholly offenssive to our notions of fair
play and purposeful availment, to hold personal jurisdiction
over a defendant because the defendant does business with
other companies within the jurisdiction. To hold jurisdiction
over Tridion for this reason, without requiring Plaintiff to
demonstrate that Tridion sold the infringing product to those
contacts within the jurisdiction, would be improper. For these
reasons, the court GRANTS Tridion’s motion to dismiss for
lack of personal jurisdiction (Docket No. 139). Accordingly, the
court finds Tridion’s motions to dismiss for failure to state a
claim and for misjoinder (Docket No. 190) to be MOOT.
III.

Failure to State a Claim
A. Legal Standard

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The applicability of Twombly and Iqbal to this complaint is
the major dispute between Plaintiff and Defendants. Plaintiff
urges the court to hold that the complaint need only meet the
more relaxed notice pleading requirements contained in Form
18. Plaintiff further argues any application of Twombly and
Iqbal, requiring more from Plaintiff, would render Rule 84 of
the Federal Rules of Civil Procedure and Form 18 insufficient.
(See Docket No. 213.) Defendants argue the Supreme Court
was clear in Iqbal that the plausibility standard described in
Twombly applied to all federal civil cases, not only antitrust or
complex litigation cases. (See, e.g. Docket No. 96 at 7.) First
Circuit law controls this analysis because motions to dismiss
are considered procedural motions by the Federal Circuit. See
C & F Packing Co., Inc. v. IBP, Inc., 224 F.3d 1296, 1306 (Fed.
Cir. 2000). Because the First Circuit has yet to rule on whether

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Twombly and Iqbal apply to patent cases, a quick review of
previous pleading standards of pleading is necessary.
1. Conley v. Gibson
Pursuant to the Rules Enabling Act, Pub. L. No. 73-415, 48
Stat. 1064 (1934) (codified as amended at 28 U.S.C. § 2072
(2012)), the Supreme Court began developing uniform
procedures for federal courts.

In so doing, the Court

developed the Federal Rules of Civil Procedure, that adopted
a notice pleading standard to all civil complaints. See Victor
Schwartz & Christopher Appel, Rational Pleading in the Modern
World of Civil Litigation: The Lessons and Public Policy Benefits of
Twombly and Iqbal, 33 HARV.J.L. & PUB. POL’Y 1107, 1119 (2010).
The notice pleading standard reached its height in 1957, when
the Supreme Court decided Conley v. Gibson. 355 U.S. 41. In

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Conley, the Court held:
In appraising the sufficiency of the complaint we follow,
of course, the accepted rule that a complaint should not
be dismissed for failure to state a claim unless it appears
beyond doubt that the plaintiff can prove no set of facts
in support of his claim which would entitle him to relief.
See id. at 45-46. This rule was the controlling analysis for
roughly fifty years until Twombly. See Ocasio-Hernandez v.
Fortuno-Burset, 640 F.3d 1, 9 (1st Cir. 2011) (stating Twombly
officially put to rest the ‘no set of facts’ language espoused by
Conley).
2. Twombly and Iqbal
Twombly marked a significant change in how the court
analyzes a complaint to see whether it sufficiently raises the
right to a claim. See Schwartz & Appel, supra at 1121 (stating
Twombly “shook the foundations of notice pleading for the
first time.”). Indeed, Twombly requires that a complaint allege

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sufficient factual allegations to, “raise a right to relief above the
speculative level.” See Twombly, 550 U.S. at 555. The Court
held the complaint must contain sufficient factual matter “to
state a claim to relief that is plausible on its face.” See id. at
570. This requirement is in stark contrast to Conley, which
simply required plaintiff to allege any set of facts that would
entitle the plaintiff to the relief sought. See Conley, 355 U.S. at
45-46. In doing so, the Court held Rule 8(a) of the Federal
Rules of Civil Procedure required factual allegations to raise
the right to relief above the speculative level; the same Rule
8(a) the Court relied upon in Conley to hold that a notice
pleading was sufficient. See Conley, 355 U.S. at 45-46.
While at first the new pleading standard was thought to
solely apply to antitrust cases, the Supreme Court in Iqbal
clarified that Twombly was to apply to all civil cases. See

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Kersenbrock v. Stoneman Cattle Co., LLC, No. 07-1044-MLB,
2007 WL 2219288, at *2 n.2 (D. Kan. July 30, 2007) (“[Twombly]
deals only with pleading requirements in the highly complex
content of an antitrust conspiracy case. It does not announce
a general retreat from the notice pleading requirement of FED.
R. CIV. P. 8(a).”); Iqbal, 556 U.S. at 684 (“[The Twombly] Rule
in turn governs the pleading standard in all civil actions and
proceedings in the United States district courts.”) (citations
omitted) (internal quotation marks omitted). Taken together,
these cases represent “a sea change in the pleading practices in
federal court.” See TYCO Fire Prods. LP v. Victaulic Co., 777
F. Supp. 2d 893, 895 (E.D. Penn. 2011).
3. Tension Between Twombly, Iqbal, Rule 84, and
Form 18
Turning to the issue present in this case, there is an inherent

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tension between the more recent precedents from the Court,
Rule 84 and the forms accompanying the Rules. See McCauley
v. City of Chicago, 671 F.3d 611, 622 (7th Cir. 2011) (Judge
Hamilton dissenting) (stating prior decisions, rules and forms
simply conflict with the rule of Iqbal); TYCO Fire, 777 F. Supp.
2d at 905 (“Put simply, the forms purporting to illustrate what
level of pleading is required do not reflect the sea change of
Twombly and Iqbal.”); Joseph Seiner, After Iqbal, 45 WAKE
FOREST L. REV. 179, 180 (2010) (“Twombly and Iqbal have
significantly changed the pleading rules for all civil cases . . .”).
On the one hand, the Federal Rules of Civil Procedure state,
“The forms in the Appendix suffice under these rules and
illustrate the simplicity and brevity that these rules
contemplate.” FED.R.CIV.P. 84. On the other hand, Form 18
titled “Complaint for Patent Infringement” simply requires a

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notice pleading standard. See FED.R.CIV.P. Form 18.
The First Circuit has yet to rule on this issue, and to date,
there is only one opinion from a district court within the
circuit.

In an unpublished decision, the District of New

Hampshire held patent claims were not subject to the
heightened pleading standards of Twombly and Iqbal. See
Investmentsignals, LLC v. Irrisoft, Inc., No. 10-cv-600-SM, 2011
WL 3320525, at *2 (D.N.H. Aug. 1, 2011). In reaching its
holding that the plaintiff need only allege sufficient facts to put
the defendant on notice of the claims against it, the district
court relied upon McZeal v. Sprint Nextel Corp., 501 F.3d 1354,
1355-56 (Fed. Cir. 2007). See id.
This court finds the rules established by Twombly and Iqbal
clearly require more than a notice pleading for direct
infringement patent claims, particularly due to the assurance

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included in Iqbal that the Twombly rule applies to all civil
cases. See Iqbal, 556 U.S. at 684. Accordingly, the court applies
the Twombly standard to Plaintiff’s direct infringement claims.
To further complicate this matter, however, this case
involves more than a sole direct infringement allegation that
was alleged by the plaintiffs in Investmentsignals. Presently,
Plaintiff alleges indirect and contributory infringement claims
in addition to its direct infringement claim. (See Docket No. 1
at 6.)

These additional claims add to the complexity of

Plaintiff’s complaint.

Even courts that have held the

heightened pleading standard does not apply to direct
infringement claims, have required the complaint meet the
heightened pleading standards for indirect and contributory
infringement claims. See Gradient Etners., Inc. v. Skype Techs.
S.A., No. 10-CV-6712L, 2012 WL 864804, at *3 (W.D.N.Y. Mar.

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13, 2012) (citing BIAX Corp. v. Motorola Solutions, Inc., No.
10–cv–03013, 2012 WL 502727, at *2 (D. Colo. Feb. 15, 2012); DR
Sys., Inc. v. Avreo, Inc., No. 11–cv–0932 BEN, 2011 WL
4850171, at *1 (S.D. Cal. 2011); Nielsen Co. (US), LLC v.
comScore, Inc., 819 F. Supp. 2d 589, 600 (E.D. Va. 2011)). These
courts have reached this conclusion because there is no form
accompanying the Federal Rules of Civil Procedure that
addresses indirect or contributory infringement allegations.
See e.g., Gradient Enterprises, 2012 WL 864804, at *3 (“Such
claims contain additional elements left entirely unaddressed by
Form 18 and therefore compliance with Form 18 does not
necessarily suffice to state a claim for indirect infringement.”)
(internal quotation marks omitted) (internal citations omitted).
Thus, in a case such as the present, the court finds the better
rule is to hold all of Plaintiff’s claims to the higher pleading

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standard set out in Twombly, rather than applying one legal
standard to the direct infringement claim and another to the
indirect and contributory infringement claims.

For these

reasons, the court will require Plaintiff’s complaint to meet the
heightened pleading standards adopted by Twombly and Iqbal
for all infringement claims. However, it is worth stating that,
as this court and many others have held, the forms
accompanying the Federal Rules of Civil Procedure should be
updated to include the specificity required by Twombly and
Iqbal. The forms, created to exemplify a sufficient, clear and
concise version of pleading, no longer serve this mission. It
furthers no purpose to have Rules and Forms, sanctioned by
Congress and the courts, that inaccurately describe the
pleading standards for civil complaints.
B. Discussion

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All remaining parties have filed motions to dismiss for
failure to state a claim and argue that Plaintiff’s complaint does
not allege sufficient facts to “raise the right to relief beyond the
speculative level.” See Twombly, 550 U.S. at 555. Five of the
remaining defendants, HP, EMC, Nuxeo, Informatica and
Lexmark, collectively filed one brief arguing this point (Docket
No. 96). Alfresco, filed a separate brief incorporating the same
arguments of its co-defendants (Docket No. 153).
Plaintiff asserts three types of infringement in its complaint:
direct, indirect and contributory. However, in its opposition,
Plaintiff does not argue the complaint sufficiently alleges facts
to sustain its contributory negligence claim. (See Docket No.
165 at 2.) Therefore, the court finds Defendants’ motion to
dismiss the contributory infringement claim to be unopposed
and any potential arguments deemed waived by Plaintiff. See

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Castro Business Enterprises, Inc. v. Medina Santiago, No.
11–1486 (SEC), 2012 WL 1252971 (D.P.R. Apr. 13, 2012) (citing
United States v. Zannino, 895 F.2d 1, 17 (1st Cir.1990)). As
such,

the

court

DISMISSES

Plaintiff’s

contributory

infringement claim. The court shall analyze the direct and
indirect infringement claims separately.
All well-pleaded facts are accepted as true by the court and
the court draws all reasonable inferences in Plaintiff’s favor.
See Parker v. Hurley, 514 F.3d 87, 90 (1st Cir. 2008).
1. Direct Infringement
Direct infringement of patents is controlled by 35 U.S.C. §
271(a). That section states, “Except as otherwise provided in
this title, 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

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the term of the patent therefor, infringes the patent.” See 35
U.S.C. § 271(a) (2012). Defendants argue Plaintiff asserts either
a method claim or a hybrid claim with method steps, and that
both claims must fail. (See Docket No. 96 at 8.) Plaintiff does
not label its claims as any particular type of claim other than
direct and indirect infringement. (See Docket No. 165.) The
abstract of the patent states, “A method and system for
publishing information on a network-based computer system
is disclosed . . . . “ (See Docket No. 1-3.)
In applying Federal Circuit precedent to construct the
claims of a patent, it is clear this patent covers both a method
and a system. See Phillips v. AWH Corp., 415 F.3d 1303, 131213 (Fed. Cir. 2005) (citing Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996) holding words of a claim are
generally given their ordinary and customary meaning)). The

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629 Patent states method claims in claims 1-19 and system
claims in claims 20-25. (See Docket No. 1-3.)
The court can dispense of the direct infringement for the
method claim because “a method or process claim is directly
infringed only when the process is performed.” See Joy Techs.,
Inc. v. Flakt, Inc., 6 F.3d 770, 773-74 (Fed. Cir. 1993). In a case
such as this, where Defendants are alleged to have sold
products that contained the patented method of controlling
web-based publishing, it is not Defendants who have
committed the infringement by selling the product. Rather it
is the end user who commits the infringement by using the
program to follow the patented method. See id. (citing Atl.
Thermoplastics Co. v. Faytex Corp., 974 F.2d 1279, 1284 (Fed.
Cir. 1992) (Newman, J., dissenting to denial of en banc); BB
Chem. Co. v. Ellis, 117 F.2d 829, 833 (1st Cir. 1941)). It is the

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end user’s use of the products sold by Defendants that
allegedly infringe upon Plaintiff’s patent, not the sale of the
product to the end user.

Here, Plaintiff does not allege

Defendants infringed on its patent by following the patent
methods themselves, a necessary allegation for a direct
infringement suit.

Therefore, by selling their products,

Defendants cannot be liable for patent infringement under
Section 271(a). See Joy Techs., 6 F.3d at 774.
Plaintiff’s system claim requires Plaintiff to allege
Defendants make, use, sell, or offer to sell or import something
having all of the elements recited in the patent claims, arranged
in the claimed manner, during the period of Plaintiff’s patent.3

3.

It is worth noting that Form 18 requires Plaintiff to comply with the
statutory requirement of giving Defendants written notice of the
infringement. See FED.R.CIV.P. Form 18. Plaintiff is statutorily
required to put Defendants on notice pursuant to 35 U.S.C. § 287.
Plaintiff alleges it has met this requirement in ¶ 45 of the complaint by

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See 35 U.S.C. § 271(a); Cross Medical Products, Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir.
2005). Plaintiff’s complaint fails to sufficiently allege facts that
support this claim. For each defendant, Plaintiff concludes the
defendant makes, uses, sells, offers for sale, or imports a
product that embodies one or more claims of the ‘629 Patent.
(See Docket No. 1 at ¶¶ 24, 28, 29, 30, 32, & 34.) The complaint
identifies an example product from each Defendant that
allegedly infringes upon a claim of the 629 Patent. (See id.)
The complaint also includes a statement attempting to
specifically state how each defendant’s product infringes on
Plaintiff’s patent.

Pertinent to Alfresco, Plaintiff states,

simply stating, “Ingeniador is in compliance with the requirements of
35 U.S.C. § 287.” (See Docket No. 1 at ¶ 45.) Whether this is a sufficient
allegation under the heightened pleading standard is not necessary to
address here.

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“Particularly, Alfresco’s Document Management (“DM”)
product allows a network user to create, access, and/or modify
files while its also infringing Web Content Management
(“WCM”) product serves as a shared environment for
enterprise customers in accordance with one or more claims of
the ‘629 patent to the injury of Ingeniador.” (See Docket No.
1 at ¶ 24.) Pertinent to EMC, “EMCC sells and offers for sale
a content management platform as a foundation for contentbased applications and solution (e.g., EMC Documentum)
which enables publishing content across websites, in
accordance with one or more claims of the ‘629 patent to the
injury of Ingeniador.” (See Docket No. 1 at ¶ 28.) Pertinent to
Informatica, “Informatica sells and offers for sale a platform
which enables a network user to access and modify data
through a web-based user interface (e.g., Informatica

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PowerCenter), in accordance with one or more claims of the
‘629 patent to the injury of Ingeniador.” (See Docket No. 1 at
¶ 30.) Pertinent to Lexmark, “Lexmark sells and offers for sale
a platform which creates, edits, and maintains documents over
a network (e.g., Perceptive Software’s InageNow), in
accordance with one or more claims of the ‘629 patent to the
injury of Ingeniador.” (See id. at ¶ 32.) Pertinent to Nuxeo,
“Nuxeo sells and offers for sale platform services (e.g., Nuxeo
Enterprise Platform) that are especially configured for webbased editing and publishing (e.g., webpage) in accordance
with one or more claims of the ‘629 patent to the injury of
Ingeniador. (See id. at ¶ 34.)
However, these statements amount to legal conclusions and
should not considered as factual statements by the court. See
Iqbal, 556 U.S. at 678 (“[t]hreadbare recitals of the elements of

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a cause of action, supported by mere conclusory statements, do
not suffice.”) Plaintiff must plead sufficient facts to raise the
right to a claim beyond a speculative level. See Twombly, 550
U.S. at 570. Plaintiff does not state sufficient facts to raise its
right to these claims beyond the speculative level. In none of
the allegations against the parties does Plaintiff state which
claim of the 629 Patent Defendants have allegedly infringed.
Plaintiff simply gives a general description of a product sold by
each Defendant, then states that product infringes upon “one
or more claims of the ‘629 patent to the injury of Ingeniador.”
Such pleading is the essence of conclusory legal statements.
While it is true that Plaintiff alleges each defendant sells a
product that deals with web-based editing and/or publishing,
Plaintiff goes no further and fails to allege which claim of the
629 Patent the offending product infringes upon. The universe

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of the internet is not so small as to allow only one patented
form of publication software. Therefore, the court GRANTS
Defendants’ motions to dismiss for failure to state a claim
pertaining to Plaintiff’s direct infringement claim (Docket Nos.
96 & 153).
2. Indirect Infringement
Indirect infringement is governed by 35 U.S.C. § 271(b)
which states, “Whoever actively induces infringement of a
patent shall be liable as an infringer.” 35 U.S.C. § 271(b). In
order to make a claim for indirect infringement, Plaintiff must
first demonstrate direct infringement. See Dynacore Holdings
Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004)
(“Indirect infringement, whether inducement to infringe or
contributory infringement, can only arise in the presence of
direct infringement . . . ”). An additional element for indirect

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infringement requires Plaintiff to allege “the defendant
possessed the requisite knowledge or intent to be held
vicariously liable.” See id. at 1273.
The court must also dismiss Plaintiff’s indirect infringement
claim for a similar reason as the direct infringement claim. In
requiring Plaintiff to sufficiently allege direct infringement
occurred, it is not necessary for Plaintiff to allege it was
Defendants who committed the direct infringement, rather the
end-user of a program built by Defendants can provide the
direct infringement necessary to support this claim. See id. at
1272 (“The direct infringer is typically someone other than the
defendant accused of indirect infringement.”). However, the
deficiencies of Plaintiff’s claim for direct infringement come to
light in their argument for indirect infringement. Mainly,
Plaintiff fails to allege how these end-users infringed upon the

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629 Patent by using the products sold by Defendants. Simply
alleging infringement is insufficient. A plaintiff must rely upon
sufficient factual material to support an infringement claim.
Plaintiff has failed to do so here.

Therefore, the court

GRANTS Defendants’ motion to dismiss Plaintiff’s indirect
infringement claim.
IV.

Conclusion

The court finds it does not have personal jurisdiction over,
Blackboard, Compulink, and Tridion. The court finds Plaintiff
has failed to state a claim upon which relief can be granted as
to EMC, Nuxeo, Informatica, Lexmark and Alfresco.
As Plaintiff’s claims against all appearing Defendants have
been adjudged to be dismissed either for lack of personal
jurisdiction by the court or for failure to state a claim, the court
finds all other motions filed by Defendants to be MOOT at this

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time, with the exception of Bridgeline’s motion to set aside
default judgment (Docket No. 241).

IT IS SO ORDERED.
In San Juan, Puerto Rico, this 15th day of May, 2012.

S/ Gustavo A. Gelpí
GUSTAVO A. GELPI
UNITED STATES DISTRICT JUDGE