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DoDots Licensing Solutions LLC v. Lenovo Holding Co., Inc.

United States District Court, D. Delaware

December 19, 2018


          Brian E. Farnan, Michael J. Farnan, Farnan LLP, Wilmington, DE; Perry Goldberg, Progress LLP, Los Angeles, CA - attorneys for Plaintiff.

          Frederick L. Cottrell, III, Renee M. Mosley, Richards, Layton & Finger, P.A., Wilmington, DE; Charanjit Brahma, Anup M. Shah, Oscar A. Figueroa, Troutman Sanders LLP, San Francisco, CA-attorneys for Defendants.



         Presently before the Court is Defendants Lenovo (United States) Inc.'s, Lenovo Holding Co., Inc.'s, and Motorola Mobility LLC's (collectively, "Defendants") partial motion to dismiss (D.I. 17) the First Amended Complaint (D.I. 15) for failure to state a claim on the grounds that Plaintiff DoDots Licensing Solutions LLC ("Plaintiff) does not plausibly allege direct and induced infringement of various asserted patents. For the reasons set forth below, the Court GRANTS-IN-PART and DENIES-IN-PART Defendants' motion.

         I. BACKGROUND

         On January 16, 2018, Plaintiff filed the present action, alleging that Defendants infringe various claims of U.S. Patent No. 9, 369, 545 ("the '545 Patent"). (D.I. 1 ¶ 22). On June 6, 2018, Defendants moved to dismiss the Complaint for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, arguing that the Complaint failed to plausibly allege that Defendants directly infringe the '545 Patent. (See D.I. 9 & 10). In response, on June 27, 2018, Plaintiff filed a First Amended Complaint that added two patents to the case - U.S. Patent Nos. 8, 020, 083 ("the '083 Patent") and 8, 510, 407 ("the '407 Patent") - and included additional detail regarding Plaintiffs allegations of direct infringement of the '545 Patent. (See, e.g., D.I. 15 ¶¶ 14-15, 22-24). The First Amended Complaint included allegations of direct infringement of the two new patents, as well as allegations of induced infringement of the '545, '083 and '407 Patents (collectively, "the Patents-in-Suit"). (See D.I. 15 ¶¶ 25-29, 32, 38, 44). On July 11, 2018, Defendants filed the present motion to dismiss, claiming that the First Amended Complaint fails to plausibly allege direct infringement of the '545 Patent, and that it also fails to plausibly allege induced infringement of any of the three Patents-in-Suit. (See D.I. 17 & 18).


         In ruling on a motion to dismiss under Rule 12(b)(6), the Court must accept all well-pleaded factual allegations in the complaint as true and view them in the light most favorable to the plaintiff. See Mayer v. Belichick, 605 F.3d 223, 229 (3d Cir. 2010); see also Phillips v. Cnty. of Allegheny, 515 F.3d 224, 232-33 (3d Cir. 2008). "[A] court need not 'accept as true allegations that contradict matters properly subject to judicial notice or by exhibit,' such as the claims and the patent specification." Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (quoting Anderson v. Kimberly-Clark Corp., 570 Fed.Appx. 927, 931 (Fed. Cir. 2014)). Nor is the Court required to accept as true bald assertions, unsupported conclusions or unwarranted inferences. See TriPlay, Inc. v. WhatsApp Inc., C.A. No. 13-1703-LPS-CJB, 2018 WL 1479027, at *3 (D. Del. Mar. 27, 2018). Dismissal under Rule 12(b)(6) is only appropriate if a complaint does not contain "sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)); see also Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). This plausibility standard obligates a plaintiff to provide "more than labels and conclusions, and a formulaic recitation of the elements of a cause of action." Twombly, 550 U.S. at 555. Instead, the pleadings must provide sufficient factual allegations to allow the Court to "draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 506 U.S. at 678.


         A. Plaintiffs Claims of Direct Infringement of the '545 Patent

         In the First Amended Complaint, Plaintiff alleges that various of Defendants' products directly infringe at least claims 1-2, 9-10, 12 and 13 the '545 Patent, all of which are method claims. (.See D.I. l5¶32). As to the Lenovo Defendants, Plaintiff identifies the following accused products: "Lenovo ThinkPad, Yoga, ThinkCentre, IdeaCentre, ideapad, ThinkStation, Legion and Flex computers, including the Lenovo ThinkPad, and Lenovo YogaBook, YogaTab, Tab, Tab 3, Tab 4, ThinkPad Tablet, MUX, Phab 2 and Phab 2 Pro mobile devices." (Id. ¶ 19). As to Defendant Motorola Mobility, Plaintiff identifies "Motorola Z, X, G, E and Droid family mobile phones, including the Motorola moto z smartphone" as the products accused of infringing the '545 Patent. (Id. ¶ 20). According to Plaintiff, each of these products (collectively, "the Accused Devices") "make[s] extensive use of apps and/or widgets[] and infringe the patents-in-suit." (Id. ¶¶ 19, 20). By way of example, Plaintiff maps the Lenovo YogaBook onto claim 1 of the '545 Patent, alleging that use of various applications (e.g., MSN weather app, podcast app) on the YogaBook results in performance of each and every limitation of claim 1. (Id. ¶¶ 22-24).[1]

         Defendants argue that they cannot be liable for direct infringement of the asserted claims of the '545 Patent based on certain activities. Every claim in the '545 Patent is a method claim and, according to Defendants, "making, selling, or offering for sale accused devices that are allegedly used by customers to practice the steps of the '545 patent is not infringing conduct as a matter of law." (D.I. 18 at 6; see also '545 Patent at Claims 1-21). As to the allegations of direct infringement by "use" of the Accused Devices, Defendants argue that the First Amended Complaint does not include factual allegations that plausibly support the inference that Defendants actually use the YogaBook (or any Accused Device) in a way that performs every step of the method in claim 1 of the '545 Patent. (D.I. 25 at 2-3). Rather, in Defendants' view, the allegations are simply a formulaic recitation of the elements of a claim of direct infringement. (Id. at 2).

         Liability for direct infringement arises under 35 U.S.C. § 271(a) when a party, without authorization, "makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent." The activities set forth in § 271(a) do not result in direct infringement unless the accused product embodies the complete patented invention. See Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252 & n.2 (Fed. Cir. 2000). Therefore, to state a claim of direct infringement sufficient to withstand a motion to dismiss, a plaintiff must plead facts that plausibly suggest that the accused product meets each limitation of the asserted claim(s). See TMI Sols. LLC v. Bath & Body Works Direct, Inc., C.A. No. 17-965-LPS-CJB, 2018 WL4660370, at *9 (D. Del. Sept. 28, 2018). Where, as here, the asserted claims are method claims, it is well-established that direct infringement exists only where there is performance of every step of the claimed method. See Meyer Intellectual Props. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1366 (Fed. Cir. 2012) ("[D]irect infringement of a method claim requires a showing that every step of the claimed method has been practiced.").

         Here, the Court agrees with Defendants that making, selling, offering to sell or importing the Accused Devices cannot - as a matter of law - constitute direct infringement of the claims of the '545 Patent within the meaning of § 271(a). Each of the claims is directed to a computer-implemented method of obtaining and displaying content over a computer network, and the law is clear that direct infringement of a method claim requires performance of every claimed step - not merely the manufacture or sale of a device capable of performing those steps. See, e.g., Ormco Corp. v. Align Tech., Inc.,463 F.3d 1299, 1311 (Fed. Cir. 2006) ("Method claims are only infringed when the claimed process is performed, not by the sale of an apparatus that is capable of infringing use."); Moba, B. V. v. Diamond Automation, Inc., 325 F.3d 1306, 1313 (Fed. Cir. 2003) ("The sale or manufacture of equipment to perform a claimed method is not direct infringement within the meaning of 35 U.S.C. ยง 271(a)."). Because there is no set of facts that could plausibly support a claim of direct infringement of the '545 Patent based on ...

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