Dialect, LLC v. Amazon.Com, Inc. et al

Filing 419

REDACTED Memorandum Opinion in re 410 Under Seal Memorandum Opinion. Signed by District Judge David J. Novak on 08/21/2024. (wgar, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division

DIALECT,LLC,
Plaintiff,
UNDER SEAL

Civil No. l:23cv581(DJN)
AMAZON.COM,INC., et a/..
Defendants.

MEMORANDUM OPINION

The Court previously resolved the first oftwo motions for summary judgment in this
patent case filed by Defendants Amazon.com,Inc. and Amazon Web Services,Inc.(together,
"Amazon"). (ECF No. 393.) Now,this matter comes before the Court on the second of those
motions(ECF No. 306), in which Amazon raises three grounds for summary judgment. On

Amazon's first ground, the Court agrees that insufficient evidence of scienter precludes liability
under § 271(f), and therefore. Dialect cannot recover damages related to foreign sales. On its
second ground, the Court concludes that Amazon has not proved its enablement defense with

sufficient rigor at this stage to warrant summary judgment; the issue ofenablement must be
presented to the jury. Finally, on Amazon's third challenge regarding pre-suit damages, the Court
finds no genuine dispute between the parties following the Court's decision on Amazon's first
motion for summary judgment; consequently, the Court denies this argument as moot.

Accordingly, the Court will grant in part and deny in part Amazon's second summary Judgment
motion.^

'
On July 4,2024, Amazon requested a hearing on its second motion for summary
judgment. (ECF No. 314.) Because the Court finds that the parties' thorough submissions

L

BACKGROUND

The facts ofthis case have been related elsewhere. See, e.g., Dialect, LLC v.

Amazon.com, Inc.[Jst Summ. J. Op.\ 2024 WL 3733437, at *1—7(E.D. Va. July 30,2024)(EOF
No.407).^ As such,the Court assumes the reader's familiarity with the underlying proceedings
and the Asserted Patents, so this section recounts only that necessary to resolve the current

motion. In short,Amazon owns,sells and develops a proprietary virtual assistant,Alexa,that
analyzes and responds to spoken words. Amazon incorporates Alexa into popular products like
Amazon Echo and Amazon Fire TV. Dialect claims that Alexa, and therefore Amazon,infhnges

patents that had been assigned to Dialect by a now-defunct firm called VoiceBox,LLC.
Accordingly, Dialect sued.

Initially, Dialect asserted seven different patents. At the motion to dismiss stage, Senior

District Judge T.S. Ellis, III invalidated one ofthose patents, U.S. Patent No.9,031,845,as being
drawn to patent-ineligible subject matter. Dialect, LLC v. Amazon.com, Inc., 701 F. Supp.3d
332,342(E.D. Va, 2023). After this case was transferred to the undersigned(EOF No. 137), the

Court dismissed another patent, U.S. Patent No. 8,140,327(the "'327 Patent"), upon finding that
Amazon's products did not infringe that patent as a matter oflaw. 1st Summ. J. Op.,2024 WL

3733437,at *19-22. Five patents(the "Asserted Patents")thus remain in controversy.^

eliminate any need for oral argument,the Court will deny Amazon's motion for a hearing. Loc.
Civ. R. 7(J); Fed. R. Civ. P. 78(b).

^

This Court's prior rulings in this case provide alternative and helpful sources for the facts.

See Dialect, LLC v. Amazon.com, Inc., 701 F. Supp. 3d 332,336-38(E.D. Va. 2023)(ruling on
Amazon's motion to dismiss); id,2024 WL 1859806,at *1 (E.D. Va. Apr. 29,2024)(construing
claim terms); id,2024 WL 3607441, at ♦1-2 (E.D. Va. July 23,2024) (declining to exclude a
witness).

^

The Asserted Patents are U.S. Patent Nos. 7,693,720 (the "'720 Patent"); 8,015,006 (the

"'006 Patent"); 8,195,468 (the "'468 Patent"); 9,263,039 (the "'039 Patent"); and 9,495,957 (the
"'957 Patent").

11.

STANDARD

The summaryjudgment posture governs. Accordingly,the movant prevails if it can
demonstrate the absence ofany "genuine dispute ofmaterial fact" and that it stands "entitled to

judgment as a matter oflaw." Fed. R. Civ.P. 56(a). All "justifiable inferences" must be drawn in
favor ofthe party opposing summary judgment,Anderson v. Liberty Lobby Inc.,477 U.S. 242,
255(1986),and the Court must not"weigh the evidenceQ or resolve factual disputes in
[Amazon's]favor." Hensley ex rel. North Carolina v. Price,876 F.3d 573,579(4th Cir. 2017).
Summary judgment Can be sought on any claim, defense or issue, but the nature ofthe

parties' burdens ofproof at trial determine how a summary judgment motion should be resolved.
When a defendant seeks summary judgment on an issue constituting part ofthe plaintiffs case in
chief,that defendant need only identify "an absence ofevidence" to support the plaintiffs case,
at which point the plaintiff must respond by producing evidence that, if believed by a reasonable
jury, would justify finding in the plaintiffs favor at trial. Celotex Corp. v. Catrett,477 U.S. 317,
322-23,325(1986).

Summaryjudgment on an affirmative defense, like Amazon's enablement defense,
involves a different standard. In that case,the defendant"must conclusively establish all

essential elements of[its] defense" and carry its burden of production. Ray Commc'ns, Inc. v.
Clear Channel Commc'ns, Inc.,673 F.3d 294,299(4th Cir. 2012). Additionally,Amazon's

enablement defense must overcome the Asserted Patents' presumption of validity by proving all

facts underpinning that defense by clear and convincing evidence. Microsoft Corp. v. i4i Ltd.
P'ship,564 U.S. 91,96-97(2011);see Baxaltalnc. v. Genentech, Inc., 81 F.4th 1362,1365(Fed.
Cir. 2023)(applying i4i). Because the Court must'View the evidence presented [on sununary

judgment]through the prism ofthe substantive evidentiary burden," Amazon must convince the
Court that any reasonable jury would have to find its evidence of non-enablement clearly and
3

convincingly proven. Anderson,477 U.S. at 254-55. Dialect,on the other hand,needs only to

persuade the Court that a reasonablejury could find the facts supporting non-enablement less
that clear and convincing ifAmazon's evidence were disregarded and Dialect's accepted.
m.

ANALYSIS

Amazon's motion advances three arguments: first, that Amazon has no liability as a

matter oflaw for exporting "components ofa patented invention" under 35 U.S.C. § 271(f)j
second,that each ofDialect's claims rests on patents that must be found invalid for lack of
enablement under 35 U.S.C. § 112(a); and third, that Dialect cannot recover pre-suit damages for

three patents, because Dialect violated the "marking"requirement of35 U.S.C. § 287(a). The
Court considers each in turn.

A.

Infringement Abroad

Dialect pleads, as relevant here, that Amazon infnnges the Asserted Patents by uploading
Alexa software onto foreign servers and into "the cloud," such that foreign Amazon devices
practice the patents'claimed inventions when accessing that U.S.-programmed code. Courts
have long held, however, that American patent rights cannot"operate beyond the limits ofthe
United States," Brown v. Duchesne,60 U.S.(19 How.)183, 195(1856), and are not infnnged by

"acts wholly done in a foreign country." Dowagiac Mfg. Co. v. Minn. Moline Plow Co.,235 U.S.
641,650(1915). Now,as then,the principle that"no infiingement occurs when a patented
product is made and sold in another country" governs almost all of patent litigation. Microsoft
Corp. V. AT& T Corp.,550 U.S. 437,441 (2007). In 1984, Congress crafted the only two

exceptions to that rule: 35 U.S.C. § 271(f)(1)and (2). Id. at 444; Patent Law Amendments Act
of 1984,Pub. L. No.98-622,§ 101(a), 98 Stat. 3383,3383. Dialect's mfringement-by-uploading

theory seeks to invoke those two provisions, but Amazon contends that Dialect caimot avail itself
of either one.
4

Before embarking on its substantive analysis,the Court details the statutory history of

§ 271(f). Congress enacted § 271(f)as"a response" to the Supreme Court's decision in
Deepsouth Packing Co. v. Laitram Corp.,406 U.S.518(1972). S. Rep. No.98-633, at 2—3
(1984); Microsoft,550 U.S. at 442-45(same). Deepsouth interpreted 35 U.S.C.§ 271(a), which
at that time deemed a person who made,used or sold "*any patented invention, within the United
States'" a "direct" infnnger. 406 U.S. at 522,527(quoting 35 U.S.C. § 271(a)(1970)).
Deepsouth,the petitioner in that case, manufactured all ofthe components ofa patented
combination within the United States. Id. at 523. None ofthe components stood subject to a

patent by itself; infringement occurred only when a person put the parts together to form the
patented machine. Id. Deepsouth exported these components to its customers abroad, who
would then build the patented machine outside ofthe United States — a scheme that Deepsouth
admitted was''motivated by a desire to avoid" the patent laws. Id. at 523-24 & n.5. Deepsouth

sought "judicial approval" ofthis practice over the objection ofLaitram,the respondent and
patent owner. Id at 524. The Supreme Court agreed with Deepsouth. Id. at 525. As the Court
explained,"a combination patent can be infnnged only by combination," and the infnnging
combination at issue was made outside ofthe United States and thus beyond the reach of§ 271.
Mat 532.

As the Senate Judiciary Committee correctly understood,Deepsouth "interpreted the
patent law not to make it infringement when the final assembly and sale [of a patented
combination] is abroad." S. Rep. No.98-633, at 3. At least some members of Congress believed

that a legislative response was necessary to avoid *the subterfuge...allowed under the
Deepsouth [decision]," and they proposed a statute that they intended to "amendQ the patent

law" to impose liability in cases where "components are supplied for assembly abroad to

circumvent a patent" Id. Section 271(f)was the result. Now,the Patent Act contains two forms
ofliability for exporting parts of patented inventions;

(1)

Whoever without authority supplies or causes to be supplied in or from the

United States all or a substantial portion ofthe components ofa patented invention,
where such components are uncombined in whole or in part, in such manner as to

actively induce the combination ofsuch components outside ofthe United States in
a manner that would infringe the patent if such combination occurred within the
United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the
United States any component of a patented invention that is especially made or
especially adapted for use in the invention and not a staple article or commodity of
commerce suitable for substantial noninfringing use, where such component is
uncombined in whole or in part, knowing that such component is so made or

adapted and intending that such component will be combined outside ofthe United
States in a manner that would infringe the patent if such combination occurred
within the United States, shall be liable as an infringer.

35 U.S.C.§ 271(f)(emphasis added). Both provisions require a defendant to "suppl[y]" at least
one "component ofa patented invention""in or from the United States." In addition, as

emphasized above and unlike the "strict-liability offense" ofdirect mfhngement, Contmil USA,
LLC V. Cisco Sys., Inc., 575 U.S.632,639(2015), both paragraphs of§ 271(f)require specific
mental states.

Amazon believes that it lacks any liability under § 271(f). Amazon argues first that

Dialect can identify no "component" that Amazon "supplies...in or from the United States"
that, when combined with other components abroad, results in a combination that would infringe

if made domestically; and second,that Dialect cannot prove that Amazon had the requisite
mental state to satisfy either paragraph of§ 271(f). Amazon's second argument carries force.

For the reasons that follow,the Court finds that Dialect has not met its burden of production to
prove Amazon's knowledge or intent at trial. The Court will therefore grant partial summary
judgment on Dialect's § 271(f)theory without addressing Amazon's first argument.

1.

Amazon Lacks Scienter Under § 271(f)(1)

Section 271(f)(1)recites no express mental state requirement. Instead, it provides that
any person who "supplies...components ofa patented invention...in such manner as to
actively induce the combination" ofthose components abroad in an mfnnging way,"shall be
liable as an infnnger." 35 U.S.C.§ 271(f)(1). However,the requisite scienter can be determined

by analogy. Section 271(f)(1) bears more than a passing resemblance to 35 U.S.C. § 271(b),
which provides that "[w]hoever actively induces infnngement ofa patent shall be liable as an
infiringer." And, with respect to § 271(b),the Supreme Court has held that"at least some intent
is required." Glob.-Tech Appliances, Inc. v. SEB S.A.,563 U.S. 754,760(2011). In Global-Tech,

the Supreme Court concluded that"induced infringement under § 271(b)requires knowledge that
the induced acts constitute patent infringement," or, at least, that the inducer was willfully blind
to **the infringing nature" ofthe induced acts. Id. at 766,771. Willful blindness, as the GlobalTech Court confirmed, has a "limited scope that surpasses recklessness and negligence":

"(1)The defendant must subjectively believe that there is a high probability that a fact exists and
(2)the defendant must take deliberate actions to avoid learning ofthat fact." Id. at 769. As
detailed below,the parties present no persuasive reason why a different standard should apply to
§ 271(Q(1); indeed, the Court can find none. On the contrary, basic principles of statutory
interpretation strongly support giving the phrase "actively induce" the same meaning in both
§ 271(b)and § 271(f)(1). See Antonin Scalia & Bryan A. Gamer,Reading Law: The

Interpretation ofLegal Texts 170-73(2012)(describing the "presumption ofconsistent usage").

The Court accordingly concludes that the scienter requirement described in Global-Tech
— knowledge ofinfringing nature or willfiil blindness thereto — applies to § 271(f)(1).

The Court rejects the parties' attempts to escape Global-Tech. Amazon contends that
Dialect cannot make the relevant showing, because Amazon believes in good faith that the

Asserted Patents "are invalid." (ECF No.313("Amazon's Br.")at 12.) Such an argument has
no relevance here. Just as "*I thought it was legal'is no defense" at common law,"beliefin

invalidity will not negate the scienter required under § 271(b)." Commil,575 U.S. at 646. The
statutory language "requires intent to 'bring about the desired result,' which is infringement." Id.
at 642.

Dialect,for its part, represents Federal Circuit precedent as holding that § 271(f)(1)
"merely requires proofthat the accused infringer'had the specific intent to combine the
components'ofthe accused products outside the U.S." (ECF No.348("Dialect's 0pp.)at9

(quoting Promega Corp. v. Life Techs. Corp.(Promega 11), 875 F.3d 651,654(Fed. Cir. 2017)
(on remand).) That,too, misreads the case law.

The original Promega decision, which the Federal Circuit adhered to in relevant part on
remand from the Supreme Court,Promega II,875 F.3d at 654,decided that § 271(f)(1)liability
extended to companies that shipped components "overseas to themselves or their foreign
subsidiaries" rather than limiting that liability exclusively to "shipping components overseas to

third parties." Promega Corp. v. Life Techs. Corp. {Promega I), 773 F.3d 1338, 1353(Fed. Cir.
2014).^ By stating that a plaintiffneeded to prove only intent to combine,Promega Idid not
decide sub silentio that a plaintiff did not need to prove knowledge that the combination would

infringe. Judicial opinions "dispose ofdiscrete cases and controversies[,] and they must be read
with a careful eye to context." Nat7Pork Prods. Council v. Ross,598 U.S. 356,373-74(2023).
Reading Promega Ito reject Global-Tech's scienter requirement would flout that guidance by

^
A separate holding ofPromega I—that the supply ofa single component could suffice
for liability under § 271(f)(1), 773 F.3d at 1353 — was reversed by the Supreme Court. Life
Techs. Corp. v. Promega Corp.,580 U.S. 140,145(2017). This reversal resulted in the Federal
Circuit's decision on remand in Promega 11.

needlessly bringing Federal Circuit precedent on § 271(f)(1)into deep tension with Supreme
Court precedent on § 271(b). The Court will not so hold.

Applying Glohd-Tech,the Federal Circuit has held that § 271(b)'s scienter requirement
can be satisfied with proofof**the defendant's subjective state ofmind, whether actual
knowledge or the subjective beliefis(coupled with action to avoid learning more)that
characterizes willful blindness." TecSec, Inc. v. Adobe Inc.^ 978 F.3d 1278,1286(Fed. Cir.

2020). Section 271(f)(1),read consistently with Global-TecK TecSec and Promega /,thus
requires a plaintiffto prove that the defendant shipped "all or a substantial portion" ofan
invention's components with the specific intent that those components be combined and the

knowledge that the resulting combination would infringe(or willful blindness to that result).
Bringing Oiose teachings to bear on the facts ofthis case shows that Dialect has not met

its burden ofproduction. First, Dialect creates nojury question as to willful blindness. That
standard requires evidence that Amazon took "deliberate actions to avoid confirming a high

probability ofwrongdoing." Global'Tech,563 U.S. at 769. Dialect identifies no such deliberate
acts; indeed,it argues willful blindness in wholly conclusoiy terms. (ECF No.352("Dialect's
Sealed 0pp.")at 12.) That does not satisfy Dialect's burden.

Second, Dialect creates no genuine jury question as to actual knowledge. Dialect's
evidence shows that, between 2011 and 2018,Amazon met with VoiceBox,assessed its invention
and discussed VoiceBox's portfolio of patents. (Dialect's Sealed 0pp. at 11.) In doing so, as
Dialect points out,!

(Id.(quoting discovery materials).) Dialect asserts that a reasonablejury "could infer

from those facts that Amazon not only knew about the['720 and '957 Patents], but knew or was

willfully blind to the fact that it and its customers infringed them." (Id at 11-12.)
The Court disagrees. Knowledge of VoiceBox's portfolio perhaps supports an inference
that Amazon knew that the '720 and '957 Patents existed, and it may indicate that some Amazon

employee considered the claims asserted here. But knowledge of"text, standing alone, is not
sufficient to prove knowledge of...legal effect." Parker v. Martin (In re Parker),653 B.R.

765,780 n.l5(E.D. Va. 2023)(Ellis, J.)(emphasis removed). The parties' vigorous litigation of
claim construction and noninfringement demonstrate the difficulty ofthe infringement decision

that thejury in this case will have to make. The Court does not believe that a reasonable juror
could conclude that Amazon made this determination without leaving a scrap ofevidence behind.

To be sure, awareness of VoiceBox's patent portfolio, combined with knowledge ofa

general conceptual resemblance, might suffice to plausibly plead knowledge ofinfiringement at
the Rule 12(b)(6) stage.^ On summary judgment,these facts might support an inference of

negligence — i.e., an inference that a reasonably diligent company would have investigated the
situation and discovered its infringement. But recklessness would be a stretch, and knowledge

lies entirely beyond the pale. To arrive at actual knowledge ofinfringing use. Dialect would
have to ask thejury to infer knowledge ofthe '720 and '957 Patents, infer knowledge ofthose

patents'claims, infer that Amazon asked whether Alexa infringed and then infer that Amazon's
answer to its question was *Ves."

^
Some district courts have held to the contrary. See, e.g.. Atlas Glob. Techs., LLC v.
Sercomm Corp.,638 F. Supp. 3d 721,728(W.D.Tex.2022)(presenting it as the rule that
"general knowledge ofa patent portfolio without more is insufficient even to plausibly allege

knowledge of a particular asserted patent")(cited by ECF No.385("Amazon's Reply")at 11).
Other district courts have disagreed and expressed skepticism ofany "bright-line rule" in this
context. SiOnyx, LLC v. Hamamatsu Photonics K.K.,330 F. Supp. 3d 574,609-10(D. Mass.
2018). The Court need not resolve this issue here.
10

To put a finer point on it, this theory requires too many speculative inferences to present a

triable issue. Nojury question exists when a party's evidence rests on "mere speculation"
produced by "building Q one inference upon another." Othentec Ltd. v. Phelan,526 F.3d 135,
140(4th Cir. 2008). On the facts ofthis case, no reasonable juror could come away from
Dialect's spare evidence with more than a suspicion that Amazon actually knew 'that [its]
induced acts constitute patent infiingement." Global-Tech,563 U.S. at 766. That cannot satisfy
Dialect's burden ofproduction. As a necessary consequence. Dialect caimot satisfy § 271(f)(l)'s
scienter requirement as a matter oflaw.
2.

Amazon Lacks Scienter Under § 271(i)(2)

The Court has now determined that Dialect creates no genuine dispute regarding the

scienter requirement of§ 271(Q(l). That finding may dispose of Dialect's case for liability
under § 271(f)(2), but only ifthat provision contains an analogous scienter requirement. After

considering the statutory text and the structure of§ 271(f),the Court finds that it does.
Section 271(f)(2)creates liability ifthe defendant supplies"any component ofa patented
invention" firom the United States. That component,however, must be "especially made or

especially adapted for use in the invention," and the defendant must act"knowing that such
component is so made or adapted." Amazon argues that this provision incorporates the scienter
required for contributory infringement under § 271(c).

A cursory inspection ofthe two sections reveals many parallels between the two. Here,
for example,is § 271(c), with all analogous portions set in italics:
Whoever offers to sell or sells within the United States or imports into the United
States a component of a patented machine, manufacture, combination or

composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially
made or especially adaptedfor use in an infiingement of such patent, and not a
staple article or commodity ofcommerce suitablefor substantial noninfringing use,
shdl be liable as a contributory infhnger.
11

And here is § 271(f)(2),run through the same filter:

Whoever without authority supplies or causes to be supplied in or from the United
States any component ofa patented invention that is especially made or especially
adaptedfor use in the invention and notastaple article or commodity ofcommerce
suitablefor substantial noninfringing use, where such component is uncombined
in whole or in part, knowing that such component is so made or adapted and
intending that such component will be combined outside ofthe United States in a
manner that would infnnge the patent if such combination occurred within the
United States, shall be liable as an infringer.

The two provisions do not make a perfect pair; as the Federal Circuit has stated,
contributory infringement doctrine cannot be blindly applied to § 271(f)(2). Waymark Corp. v.

Porta Sys. Corp.,245 F.3d 1364,1368(Fed. Cir. 2001). However,legislative history confirms
what should be clear to the eye: Section 271(f)(2)'s knowledge requirement"comes from

existing section 271(c)." S. Rep. No.98-663, at 7.^ The Court would be remiss to disregard the
"longstanding interpretive principle" that when statutory text"is obviously transplanted from
another legal source,it brings the old soil with it." Taggart v. Lorenzen, 587 U.S. 554,560

(2019)(cleaned up). A litigant seeking to ascribe different meanings to these words has a hard
row to hoe.

Amazon's scienter argument finds support in precedent, history and statutory text. First

and foremost,Amazon's argument relies on persuasive and entrenched Supreme Court case law
interpreting 35 U.S.C. § 271(c). In Aro Manufacturing Co. v. Convertible Top Replacement Co.,
the Supreme Court construed that subsection's "element of knowledge." 377 U.S. 476,488

(1964). Because the statute then, as now,created liability only for "sale ofa component of a

patented combination *knowing the same to be especially made or especially adapted for use in

^

Federal Circuitjudges have acknowledged this fact See, e.g., Zoltek Corp. v. United

States,672 F.3d 1306, 1334 n.6(Fed. Cir. 2012)(en banc) pyk,J., dissenting)("The language
ofsection 271(f)itself mimics the language ofthe indirect infringement provisions ofsections
271(b)and (c).").
12

an infringement,'" the Supreme Court asked whether this text required knowledge that the

component was patented and that its use would result in infringement. Id Construing the very
text that Congress later transplanted into § 271(f)(2),the Aro court said that the answer was

'Ves." It has thus been the case since 1964 that § 271(c)"require[s] a showing that the alleged
contributory infringer knew that the combination for which his component was especially

designed was both patented and infringing." IdJ The same text in § 271(f)(2)compels the same
result.

The remainder of§ 271(f)(2)'s text makes this result more and not less likely. Section

271(c)states that a contributory infnnger must act with knowledge, but it says nothing about

specific intent. Section 271(f)(2), on the other hand,requires that a defendant act"intending that
[its supplied] component will be combined outside ofthe United States in a manner that would
infringe the patent ifsuch combination occurred within the United States." This language does
not lack ambiguity. Perhaps the statute, ofits own force, requires not only that the defendant
intend the combination but also that the defendant intend that the combination be infnnging.®

Other interpretations could be grammatically valid and persuasive. However,Aro renders the
question moot. The Court sees no meaningful difference between acting with a specific intent to

'

Indeed,Aro^s holding has become so entrenched that tiie Supreme Court's reasoning for

its chosen scienter standard for induced infringement rested in large part on the need for
consistency between § 271(b)and (c). Global-Techt 563 U.S. at 761-66. Because the two
provisions shared "a common origin," the Court said, it would be "strange to hold that
knowledge ofthe relevant patent is needed under § 271(c)but not under § 271(b)." Id. at 765.
®
Legislative histoiy would support such a reading. The Senate Judiciary Committee
understood the provision that became § 271(0(2)to require proof of"an intent that the

components will be combined outside ofthe United States in a manner that would infringe ifthe
combination occurred within the United States" — suggesting that, at the time ofenactment, that
clause was understood to enact a single, integrated specific intent requirement. S. Rep.
No. 98-663, at 7(1984).
13

infringe and acting with the knowledge that an intended combination will infringe. This
language only reinforces the Courtis view that the statutory text requires, at minimum,
knowledge that the combination a defendant intends to make would be an infringing one.
The Court,in short, agrees with the three-part § 271(f)(2) mental state test articulated by
other district courts. Under that test, a plaintiff must prove that the defendant"(0 intended the

combination ofcomponents to occur outside the United States,(ii)knew that the combination it
intended was covered by a United States patent, and (iii) knew that the combination it intended

would be infringing ifit occuned in the United States." Veeco Instruments Inc. v. SGL Carbon,
LLC,2017 WL 5054711, at *22(E.D.N.Y. Nov.2,2017)(citing and quoting WesternGeco LLC.

V. ION Geophysical Corp.,953 F. Supp.2d 731,749(S.D. Tex. 2013)^); accord Whitewater W.
Indus., Ltd v. Pac. SurfDesigns, Inc.,2019 WL 4452986, at *12(S.D. Gal. Sept. 16,2019).

Dialect cannot rely on Waymark to avoid this logical result. Dialect insists that Waymark
"held that[§ 271(f)(2)] merely requires a showing that the accused infringer shipped the
components ofthe infringing device *with the intent that they be combined.'" (Dialect's Opp. at

10(quoting Waymark,245 F.3d at 1368).) But Dialect misreads WaymarkHas same way that it
misread Promega /. That case did not hold that intent to combine was the only mental state
required by § 271(f)(2). Instead, WaymarkhaXd that § 271(f)(2)'s intent clause does not require
"an actual combination ofthe components"to occur,instead, the statute requires"a showing that
the infringer shipped them with the intent that they be combined." Waymark,245 F.3d at 1368

(emphasis added). The case distinguished § 271(c)on the grounds that § 271(c)'s use ofthe term

' On appeal in WesternGeco, the parties did not challenge the district court's intent
standard. WesternGeco L.L.C. v. ION Geophysical Corp., 791 F.3d 1340,1348 & n.5(Fed. Cir.

2015). The matter's long afterlife on appe^ concerned questions not implicated by this case.
See WesternGeco LLC v. ION Geophysical Corp.,585 U.S.407,411-12(2018)(summarizing
procedural history).
14

^^contfihutoiy infiiiigcr" logically required a predicate act ofdirect infiingement under

§ 271(a). Id. Section 271(f)(2), however,made violators liable for ordinary "infhngement"
rather than "contributory infringement," thereby suggesting that no underlying direct
infiingement needed to occur. Id.

Waymark^v& does not hold that a defendant can violate § 271(f)(2)without knowing of
an infringing result or intending to cause infringement. Like Promega 7, Waymark^s language
should not be overread to suggest that the Federal Circuit has adopted a reading that would run

counter to the entire corpus ofindirect infiingement case law. Indeed, because Waymark held
that liability under § 271(f)(2)requires only intent to combine rather than actual combination, it
would be natural to conclude by analogy that the statute requires only intent to infiinge rather

than actual infiingement. Thus,despite Dialect's protestations that Waymark resolves the
question ofintent,the case hurts Dialect at least as much as it helps.
In conclusion,the Court finds that liability under § 271(f)(2)requires a defendant to act
with the intent to cause a combination that the defendant knows would be infringing ifit

occurred in the United States. As explained in the previous section. Dialect has no evidence that
would permit an inference ofsuch knowledge. Accordingly,the Court holds that Dialect cannot
establish liability under § 271(f)(2)as a matter oflaw.

Dialect also faults the Veeco and Whitewater courts for failing to distinguish Waymark.

(Dialect's 0pp. at 10 n.4.) But both cases acknowledged Waymark^s holding and,like this Court,
did not find that Waymark foreclosed a knowledge-of-intent requirement. The Whitewater court
recognized,citing Waymark,that § 271(f)(2)and § 271(c)"are not the same" — but it correctly
concluded that § 271(f)(2)*s "knowing" clause incorporated the Supreme Court's decision in Aro.
2019 WL 4452986,at *11-12 & n.l2. Likewise,the Veeco court recognized Waymarl^s holding,

and it acknowledged that § 271(f)(2)"does not perfectly parallel" any ofthe other provisions of
§ 271,including § 271(c), even as it concluded that the statute required knowledge that the
intended combination would infringe. 2017 WL 5054711,at *19 n.48, *22. The reasoning in
those cases is not flawed for failing to distinguish Waymark^s language rather than its logic.
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B.

Enablement

Amazon next contends that all asserted claims ofthe *006, *720, 957, 468 and 039

Patents are not enabled by their respective specifications and therefore cannot ground Dialect*s

infiingement claim. (Amazon*s Br. at 12.) The Court finds Amazon s contentions insufficient to
overcome its heavy burden on this affirmative defense.
1.

The Applicable Law

The Patent Act requires every patent*s specification to disclose **the manner and process
of making and using [the claimed invention], in such full, clear, concise, and exact terms as to

enable any person skilled in the art to which it pertains, or with which it is most nearly
connected,to make and use the same.** 35 U.S.C. § 112(a). This requirement,known as

"enablement,** has long been present in the patent laws,and the Supreme Court has enforced it in
a continuous line ofcases dating back to 1846. Amgen Inc. v. Sanqfi,598 U.S. 594,604-06
(2023). This doctrine, as the Supreme Court recently reaffirmed, requires that a patent claiming

"an entire class of processes... must enable a person skilled in the art to make and use the entire
class.** Id. at 610. "In other words,the specification must enable the full scope ofthe invention
as defined by its claims. The more one claims, the more one must enable.** Id.
Nevertheless,the courts have never required a patentee to disclose"how to make and use

every single embodiment within a claimed class.** Id. at 610-11. Instead,"a specification may
call for a reasonable amount ofexperimentation,** with reasonableness to be determined based on
"the nature ofthe invention and the underlying art.** Id. at 612.

Procedurally,a patent challenger must begin an enablement challenge by identifying
"evidence that some experimentation is needed to practice the patented claim.** Amgen Inc. v.

Sanofl, Aventisub LLC(Sanqfl-Aventisub),987 F.3d 1080,1084(Fed. Cir. 2021),ajf'd sub nom.
Amgen Inc. v. Sanqfty 598 U.S. 594(2023). That threshold showing "routinely involve[s]
16

concrete identification ofat least some embodiment or embodiments asserted not to be enabled."

McRO,Inc. V. BandaiNamco Games Am. Inc.(McROII)^ 959 F.3d 1091,1100(Fed. Cir.2020).
Once the challenger makes that threshold showing,it remains to determine *Svhether the amount

of n experimentation [identified] is either'undue'or sufficiently routine such that an ordinarily
skilled artisan would reasonably be expected to carry it out." Id. at 1084—85(quoting Alcon,745

F.3d at 1188). Longstanding Federal Circuit precedent identifies eight non-exclusive factors that
inform(but do not circumscribe)that inquiry:

(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented,(3)the presence or absence ofworking examples,(4)the nature
ofthe invention,(5)the state ofthe prior art,(6)the relative skill ofthose in the art,
(7)the predictability or unpredictability ofthe art,and(8)the breadth ofthe claims.
In re Wands,858 F.2d 731,737(Fed. Cir. 1988).^* Critically, when applying the Wands factors,

"it is important to consider the quantity ofexperimentation that would be required to make and
use, not only the limited number ofembodiments that the patent discloses, but also the full scope
ofthe claim." Sanofl-Aventisub,987 F.3d at 1086.
2.

Amazon's Theories of Non-Enablement

0.

Speech Recognition

Amazon presents two arguments for non-enablement First,Amazon claims,the Asserted

Patents do not enable their speech recognition elements. To demonstrate that the Asserted

Patents fidl,Amazon focuses on|
which,in Amazon's telling. Dialect contends satisfies the Asserted Patents* requirement of"a

speech recognition engine." (ECF No.312("Amazon's Sealed Br.")at 14-15(quoting the *006,

"
The Supreme Court's Amgen decision did not refer to the Wands factors. Importantly,
however,the Federal Circuit"do[es] not interpret Amgen to have disturbed [its] prior enablement
case law,including Wands and its factors." Baxalta Inc. v. Genentech, Inc.,81 F.4th 1362,1367
(Fed. Cir. 2023).
17

'720,*957,'468 and'039 Patents).) Amazon only developed this technology

long

after the Asserted Patents'effective dates, and it argues that the Asserted Patents disclose nothing
that would "enable a person ofordinary skill in the art to practice the accused

||[|||^miim speech recognition as ofthe effective filing dates in 2002 and 2005. ijd, at 16.)
Amazon's argument foils at this first step,as its evidence does not clearly and

convincingly dononstrate beyond reasonable dispute that"some experimentation is needed to
practice the patented claim." Sanoft-Aventisub,987 F3d at 1084. Because § 112(a)does not

require specifications to enable "matter outside the claims,"Amazon must interpret the claims,

identify "the precise scope ofthe claimed invention," and point to "embodiments ofthe
invention"that the specification allegedly cannot enable. McRO //,959 F.3d at 1100. Amazon

characterizes Dialect as contending that Alexa's ASR,which usesgm technology,falls

within the scope ofthe Asserted Patents. (Amazon's Sealed Br. at 15.) Its arguments draw the
Asserted Patents so broadly that they cover Alexa's ASR unit in its entirety. However,Dialect
disclaims such an overbroad construction. Instead, Dialect contends that"only specific features

ofAlexa's ASR are covered by the asserted claims." (Dialect's 0pp.at 17.)

Amazon paints Dialect as arguing that"each [Asserted Patent] covers the entire class of
speech recognition processes." (Amazon's Br. at 14.) That is not true. To givejust one
example,Claim 1 ofthe'720 Patent does not recite(and therefore need not enable)the concept
ofspeech recognition writ large, or even,as Amazon would have it, tihie recognition of"at least

one ofwords or phrases...using data received from a pluralify ofdomain agents." (Amazon's

Br. at 14(quoting *720 Pat col. 32,11.43-46).)'^ That claim covers only forms ofspeech

Analogous problems plague Amazon's analysis ofthe "speech recognition" elements of
the'006,'957,'468 and'039 Patents* claims. Because Amazon attacks the enablement ofall
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recognition that"recognizcQ at least one of words or phrases from [an]electronic signal
using... a plurality ofdictionary and phrase entries that are dynamically updated based on at
least a history ofa current dialog and one or more prior dialogs associated with the user." *720
Pat. col. 32,11.43-50. It is this technology — **the novel aspect ofthe claimed invention'* —

that *the specification must reasonably teach how to make and use," McRO II,959 F.3d at 1102,
rather than *the use ofneural networks** as such. (Amazon's Sealed Br. at 16.) Patents,in short,

do not need to teach techniques that they do not claim. See also infra § III.B.2.b (explaining that

specifications can rely on artisans* prior knowledge to enable non-novel aspects oftheir claims).
If little experimentation would be needed to apply the Asserted Patents* novel aspects to new
techniques for recognizing words,the patents are enabled.

The question,in short, is not whether the Asserted Patents enable the full scope ofAlexa.

Instead,the question asks whether they enable the full scope oftheir claimed embodiments.

Mth respect to the portion ofClaim 1 ofthe *720 Patent discussed in the preceding paragraph,
the scope ofthe limitation encompasses speech recognition accomplished by using "a plurality of
dictionary and phrase entries that are dynamically updated based on at least a history of a current

dialog and one or more prior dialogs associated with the user." '720 Pat. col. 32,11.47-50.
Amazon cannot read that portion ofthe limitation out ofthe claim, and it points to no facts
showing that the *720 Patent's specification does not enable these aspects ofAlexa. It thus
presents no evidence — let alone conclusive,clear and convincing evidence — that

experimentation would be required to enable all ofthe embodiments ofthe speech recognition
technology that the Asserted Patents claim,rather than all possible devices that incorporate those

those claims together(Amazon's Br. at 14—20),the Court focuses its analysis on Claim 1 ofthe
*720 Patent, which the Court finds to be representative.
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embodiments. The Court need not discuss the Wands factors to conclude that this does not

suffice. Amazon thus foils to establish that the Asserted Patents do not enable their speech
recognition engine** limitations at the summaryjudgment stage.
b.

NaturalLanguage InterpretaUott

Amazon*s second argument for non-enablement focuses on the **pafser** requirements of
the'006 and '720 Patents, A representative example can be found in Claim 1 ofthe'720 Patent:

[A]parser that interprets the recognized words or phrases, wherein the parser uses
at least the data received from the plurality of domain agents to interpret the

recognized words or phrases, wherein the parser interprets the recognized words or
phrases by:

determining a context for the natural language speech utterance;

selecting at least one of the plurality of domain agents based ,on the
determined context; and

transforming the recognized words or phrases into at least one ofa question
or a command, wherein the at least one question or command is formulated
in a granunar that the selected domain agent uses to process the formulated
question or command[.]

'720 Pat. col. 32.11.51-64.^^

Amazon argues that this limitation,like the other **parser" requirements ofthe'006 and
'720 Patents,purportedly covers "Alexa's Natural Language Understanding(NLU)component"
but does not enable die technology on which it depends. (Amazon's Sealed Br. at 20.)

Specifically,Amazon contends that Alexa's NLU interprets words by|

The Court believes that this language adequately represents the other **parser*' limitations

ofthe'006 and '720 Patents. Indeed,those other limitations provide even less specificity for the
method to be applied;for instance, Claim 10 ofthe '006 Patent requires "parsing, at a parser

coupled to the processing device,information relating to the utterance to determine a meaning
associated with the utterance and a context associated with the request contained in the
utterance." 006 Pat. col. 30,11.4-7.
20

|. (IcL at 20-21.) Dialect responds that the claims'^require a parser...

♦>>at meets specific requirements and purposes. .. and do not once mention neural network
models or machine learning." (Dialect's 0pp. at 19.)

Amazon's second argument proves stronger tiian its first, but it fails to warrant summary

judgment. To begin, the "parser" limitations, unlike the "speech recognition engine" limitations
discussed in the previous section, use language broadly enough to capture all or nearly all of the
techniques th^^t Amazon contends are not enabled. In other words, the scope of the 006 and
*720 Patents comprises methods and systems whose "parsers" "analyzeQ a string of words"

using deep neural networks. Dialect, LLC v. Amazoncom, Inc., 2024 WL1859806, at *22 (E.D.

Va, Apr. 29,2024) (construing the term **parser"). Accordingly, the specifications of these
pat^its must enable a person of ordinary skill in the art to practice their claimed inventions using
deep neural network technology.

Amazon asserts that this conclusion ought to doom the "parser" claims, because the '006
and '720 Patents "contain no description of any deep neural network models." (Amazon's

Sealed Br. at 21.) In response, Dialect contends that such technology has been "well known in
the field of computer science and natural language understanding since before the filing dates of
the NLU Patents." (Dialect's 0pp. at 20.) Amazon assumes the truth of that assertion but
nevertheless insists that no background knowledge of the techniques involved here can

"'substitute for a basic enabling disclosure' within die specification explaining how machine

learning could be implemented to interpret words." (EOF No. 385 ("Amazon's Reply") at 18

(quoting if uto. Techs. Int% Inc. v. BMW ofN. Ant, Inc., 501 F.3d 1274,1283-84 (Fed. Cir.
2007)).)

21

Aniazon*s argument proves unpersuasive. Amazon cites case law stating that'the

enabling disclosure[ofan invention] must appear in the specification at the time offiling."
(Amazon's Br. at 22(quoting MagSil Corp. v. Hitachi Glob. Storage Techs., Inc.,687 F.3d 1377,
1382(Fed. Cir. 2012)).) No party contends otherwise. However,Amazon's briefs elide what,
precisely, constitutes "the enabling disclosure." The Federal Circuit has been clear that
specifications"need not teach, and preferably omitQ,what is well known in the art at the time
offiling. McRO II,959 F.3d at 1102(quoting Spectra-Physics, Inc. v. Coherent, Inc., ni F.2d
1524,1534(Fed. Cir. 1987)). Amazon's own authority clarifies that the backgrouid knowledge
ofskilled artisans does not change the rule that"'the specification...must supplj'the novel

aspects ofan invention'" — in other words,its "essential concept." Auto. Techs.,|501F.3dat
1283(quoting Genentech, Inc. v. Novo NordiskA/S, 108 F.3d 1361,1366(Fed. Cii*. 1997)).
Amazon never argues that the '720 and '006 Patents'"parser" limitations constitute those

patents'"novel aspects" or "essential concept[s]." Id. Accordingly, Dialect may rely on artisans
background knowledge to demonstrate that the'720 and '006 Patents enable their inventions.
Drawing all reasonable inferences in Dialect's favor and remaining mindful ofAmazon's
heavy "clear and convincing" burden of proof,the Court cannot say that the "parser" limitations
cause the '006 and '720 Patents to fail for lack ofenablement. Dialect presents testimony from

its expert. Dr. H. V. Jagadish,to support its assertion that neural network and machine learning
technologies were known well enough in the art to enable an artisan ofordinary skill to apply
them to the '006 and '720 Patents without unreasonable experimentation. (Dialect's 0pp. at 20.)

The Court finds that ajury could reasonably rely on that testimony to conclude that Amazon

failed to prove its defense by clear and convincing evidence. That conclusion precludes
summary judgment.

22

At trial, Amazon can introduce evidence addressing the Wands factors, and it can ask a

jury to hold that the Asserted Patents do not enable methods and systems that parse and interpret
words using machine learning and deep neural networks. However,its evidence and argument
carry insufficient force to overcome the challenging burden that it faces at this stage.
C.

Pre-Suit Damages

The Court concludes by resolving Amazon's third argument as moot. Amazon claims
that Dialect cannot recover pre-suit damages because it failed to comply with the "marking

requirement of35 U.S.C. § 287(a). (Amazon's Br. at 24-27.) Specifically,Amazon contends
that Dialect cannot recover pre-suit damages for the '720,'957 and '327 Patents. With respect to

the'327 Patent,the parties no longer present ajusticiable controversy, because the Court has
granted Amazon summaryjudgment ofnoninfiingement on all claims ofthat patent. (ECF No.

394 at 1.) With respect to the others. Dialect"does not contend"that it can recover pre-suit
damages for infiringement ofthe'720 and '957 Patents. (Amazon's Br. at 24(quoting ECF No.
312-3(Amazon's Br. Ex.3)at 73).) "A party who identifies an issue, and then explicitly
withdraws it, has waived the issue." United States v. Council,11 F.4th 240,256(4th Cir. 2023)
(quoting United States v. Robinson,744 F.3d 293,298(4th Cir. 2014)). Dialect's express

disavowal of pre-suit damages for the '720 and '957 Patents matches that test; with respect to

those patents,the pre-suit damages issue has been waived. As a result, addressing Amazon's
§ 287(a)argiunent would serve no purpose,and the Court will deny that portion ofAmazon's

motion as moot. (See ECF No.394 at 1-2(doing the same with respect to Dialect's motion for
summary judgment).)
IV.

CONCLUSION

The preceding analysis leads the Court to draw the following conclusions. First,
Dialect's § 271(^ theory of liability fails to present a triable question offact, thereby precluding
23

damages related to foreign sales. Second,Amazon's enablement theory of invalidity, which must
overcome a demanding legal standard in this posture, does present such a dispute; the

enablement question will be resolved at trial. Lastly, Amazon's marking defense must be
disregarded as moot.

An appropriate Order shall issue.

Let the Clerk file a copy ofthis Memorandum Opinion and notify all counsel of record.
The Court directs the Clerk to file this Memorandum Opinion under seal pending proposed
redactions by the parties.

David J. Novak

Richmond, Virginia

United States District Judge

Date: August 21.2024

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