United States District Court, D. Delaware
E. Farnan, Michael J. Farnan, Farnan LLP, Wilmington, DE;
Perry Goldberg, Progress LLP, Los Angeles, CA - attorneys for
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.
NOREIKA, U.S. DISTRICT JUDGE.
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.
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).
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.
Plaintiffs Claims of Direct Infringement of the '545
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).
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).
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
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. §
271(a)."). Because there is no set of facts that could
plausibly support a claim of direct infringement of the
'545 Patent based on ...