United States District Court, D. Delaware
REPORT AND RECOMMENDATION
CHRISTOPHER J. BURKE, UNITED STATES MAGISTRATE JUDGE.
this patent infringement action filed by Plaintiff Modern
Telecom Systems, LLC ("Plaintiff or "Modern
Telecom")), Defendants TCL Communication Inc., TCT
Mobile, Inc., TCT Mobile (US) Inc., and TCT Mobile (US)
Holdings, Inc. (collectively, "Defendants") have
filed a motion to dismiss the Complaint ("Motion"),
pursuant to Federal Rule of Civil Procedure 12(b)(6). (D.I.
More specifically, Defendants move to dismiss Plaintiffs
allegations of direct infringement, induced infringement,
contributory infringement and willful infringement of the one
patent-in-suit, United States Patent No. 6, 504,
("the '886 patent" or the
"patent-in-suit"). (Id. at 1) The instant
Motion has been referred to the Court for resolution by Chief
Judge Leonard P. Stark. (D.I. 5)
standard of review here is the familiar two-part analysis
applicable to motions made pursuant to Rule 12(b)(6). See
Raindance Techs., Inc. v. 10x Genomics, Inc., Civil
Action No. 15-152-RGA, 2016 WL 927143, at *2 (D. Del. Mar. 4,
2016) (applying the Twombly/lqbal standard to claims
of direct patent infringement filed subsequent to the
December 2015 abrogation of Federal Rule of Civil Procedure
84 and patent pleading Form 18); see also North Star
Innovations, Inc. v. Micron Tech., Inc., Civil Action
No. 17-506-LPS-CJB, 2017 WL 5501489, at *1 (D. Del. Nov. 16,
2017). First, the court separates the factual and legal
elements of a claim, accepting "all of the
complaint's well-pleaded facts as true, but
[disregarding] any legal conclusions." Fowler v.
UPMC Shadyside, 578 F.3d 203, 210-11 (3d Cir. 2009).
Second, the court determines "whether the facts alleged
in the complaint are sufficient to show that the plaintiff
has a 'plausible claim for relief" Id. at
211 (quoting Ashcroft v. Iqbal, 556 U.S. 662, 679
(2009)). A plausible claim does more than merely allege
entitlement to relief; it must also demonstrate the basis for
that "entitlement with its facts." Id.
Thus, a claimant's "obligation to provide the
'grounds' of his 'entitle[ment] to relief
requires more than labels and conclusions, and a formulaic
recitation of the elements of a cause of action will not
do." Bell Ail. Corp. v. Twombly, 550 U.S. 544,
555 (2007). In assessing the plausibility of a claim, the
court must '"construe the complaint in the light
most favorable to the plaintiff, and determine whether, under
any reasonable reading of the complaint, the plaintiff may be
entitled to relief" Fowler, 578 F.3d at 210
(quoting Phillips v. Cnty. of Allegheny, 515 F.3d
224, 233 (3d Cir. 2008)).
regard to the claims of direct infringement, Plaintiff makes
"exemplary" allegations that one of Defendants'
products (the "Blackberry PRIV") infringes one
claim of the patent-in-suit (claim 18, which is an apparatus
claim). (D.I. 1 at ¶ 24) Thus, Plaintiff needs to have
pleaded facts that plausibly indicate that the Blackberry
PRIV practices each of the limitations found in claim 18.
e.Digital Corp. v. iBaby Labs, Inc., Case No.
15-cv-05790-JST, 2016 WL 4427209, at *3-4 (N.D. Cal. Aug. 22,
2016); Raindance Techs., Inc., 2016 WL 927143, at
*2-3; see also North Star, 2017 WL 5501489, at *1.
After all, if it is not plausible, after reading a complaint,
that the accused infringer's product reads on a
limitation in the one asserted claim from a patent-in-suit,
then it is not plausible that the accused infringer actually
infringes the patent claim (or the patent). See e.Digital
Corp., 2016 WL 4427209, at *3; Atlas IP, LLC v.
Exelon Corp., 189 F.Supp.3d 768, 775 (N.D. Ill. 2016);
see also North Star, 2017 WL 5501489,
Plaintiff has not pleaded sufficient facts to render it
plausible that the Blackberry PRIV infringes claim 18. Claim
18. A communication device capable of communicating a
learning sequence descriptor for use in constructing a
learning sequence, said device comprising:
a transmitter; and
a processor in communication with said transmitter; wherein
said processor is capable of providing a first parameter, a
second parameter and a third parameter to said transmitter
capable of transmitting said parameters, wherein said first
parameter specifies a number of segments in said learning
sequence, said second parameter specifies a sign pattern of
each of said segments, and said third parameter specifies a
training pattern of each of said segments, wherein said
training pattern is indicative of an ordering of a reference
symbol and a training symbol in each of said segments.
('886 patent, cols. 20:58-21:6) In the key paragraph in
the Complaint (where Plaintiff attempts to articulate how it
is that claim 18 is infringed), Plaintiff makes two basic
assertions: (1) it repeats the words of claim 18, and states
that "the Blackberry PRIV ... satisfies, literally or
under the doctrine of equivalents, each and every claim
limitation" of claim 18; and (2) it also states that
"[o]n information and belief, the Blackberry PRIV
includes a 8992 Snapdragon component , and operates
pursuant to Part 11: Wireless LAN Medium Access Control (MAC)
and Physical Layer (PHY) Specifications of IEEE Std
802.11™-2012 and IEEE Std 802.11™-2009
(collectively, the relevant 'Wi-Fi Standard')."
(D.I. 1 at ¶ 24)
to the first assertion, simply parroting back the words of
the claim and stating (without more) that the Blackberry PRIV
infringes that claim is not helpful. That amounts to little
more than a conclusory statement that "Your product
infringes my patent claim." There needs to be some
facts alleged that articulate why it is
plausible that the other party's product infringes
that patent claim-not just the patentee asserting, in a
take-my-word-for-it fashion, that it is so.
regard to Plaintiffs second assertion-the bald allegation
that the Blackberry PRIV operates pursuant to what the
Complaint refers to as the "relevant Wi-Fi
Standard"-that too is not enough. As Defendants note,
"lacking in the Complaint are any facts purporting to
show how 'operating] pursuant to' the Wi-Fi Standard
relates to infringement of any limitations of claim 18, nor
does the Complaint include any allegations relating to why it
is plausible that "the accused Infringing
Instrumentalities implement the Wi-Fi Standard[.]" (D.I.
14 at 4) Plaintiff must have some basis to believe that
compliance with certain portions of the Wi-Fi Standard
require the practice of each of the limitations of claim 18
of the patent-in-suit, and must have some basis to believe that
the Blackberry PRIV operates pursuant to the Wi-Fi Standard.
It just needs to plead some facts that show the Court how it
is plausible that these things are so.
to this second assertion, the result in Network Managing
Solutions, LLC v. AT&T Inc., No. 16-cv-295 (RGA),
2017 WL 472080 (D. Del. Feb. 3, 2017), is instructive. In
Network Managing Solutions, the defendant
successfully moved to dismiss the plaintiffs direct
infringement claims, wherein the plaintiff, in its complaint,
had: (1) identified at least one claim from each asserted
patent that it alleged the defendant had infringed; (2)
alleged that the "3rd Generation Partnership Project
Standards incorporate the technologies covered by the
patents" and (3) alleged "on information and belief
that Defendants adopted the 3GPP standards." 2017 WL
472080, at * 1. The Network Managing Solutions Court
found that the second of these allegations was insufficient
to state a plausible claim, because "[p]laintiff knows
its own patents [and] [t]he standards are public[, ]" so
"[s]aying 'on information and belief that the
standards 'incorporate the fundamental technologies'
covered by the patents, without more, is insufficient to
plausibly allege that to practice the standard necessarily
means that a defendant also practices the patent."
Id; see also Stragent, LLC v. BMW of N. Am., LLC,
CIVIL ACTION NO. 6:16-cv-446-RWS-KNM, 2017 WL 2821697, at
*4-7 (E.D. Tex. Mar. 3, 2017) (citing Audio MPEG, Inc. v.
HP Inc., No. 2:15-cv-00073-HCM-RJK, No.
2:16-cv-00082-HCM-RJK, 2016 WL 7010947, at *8 (E.D. Va. July
Because Plaintiffs allegations of induced, contributory and
willful infringement all require that there be plausible
allegations of direct infringement (and there are not), the
allegations as to those claims are necessarily insufficient
as well. Thus, the Court need not further address
Defendants' remaining arguments herein as to those
its briefing, Plaintiff requests leave to amend should the
Court grant this Motion. (D.I. 20 at 2, 14) In light of the
fact that leave to amend should be given freely "when
justice so requires[, ]" Fed.R.Civ.P. 15(a)(2), and
because dismissal with prejudice is "rarely" a
proper sanction, see Univ. of Pittsburgh v. Varian Med.
Sys., Inc.,569 F.3d 1328, 1334 (Fed. Cir. 2009) (citing
Third Circuit case law), the Court recommends that ...