United States District Court, D. Delaware
REPORT AND RECOMMENDATION
R. FALLON UNITED STATES MAGISTRATE JUDGE.
before the court in this patent infringement action is
defendant Comcast Cable Communications, LLC's
("Comcast") partial motion to dismiss for failure
to state a claim upon which relief can be granted pursuant to
Federal Rule of Civil Procedure 12(b)(6). (D.I. 10) For the
reasons that follow, the court recommends GRANTING-IN-PART
and DENYING-IN-PART Comcast's motion to dismiss.
3, 2019, plaintiff NexStep, Inc. ("NexStep")
originally filed this patent infringement action against
Comcast, alleging infringement of nine patents, United States
Patent Numbers 7, 444, 130 ("the '130 patent"),
7, 542, 753 ("the '753 patent"), 7, 697, 669
("the '669 patent"), 7, 907, 710 ("the
'710 patent"), 8, 280, 009 ("the '009
patent"), 8, 494, 132 ("the '132 patent"),
8, 885, 802 ("the '802 patent"), 9, 614, 964
("the '964 patent"), and 9, 866, 697 ("the
'697 patent") (collectively, the
"patents-in-suit"). (D.I. 1 at ¶¶ 10-18)
The United States Patent and Trademark Office
("USPTO") issued the patents-in-suit to Dr. Robert
Stepanian ("Dr. Stepanian"), the founder of
NexStep, between 2008 and 2018. (Id. at ¶¶
8, 10-18) The patents-in-suit relate to systems and methods
for controlling and integrating a variety of devices,
"such as TVs, set-top boxes, DVRs, VoIP (telephone)
systems, and home devices (e.g., security cameras, electrical
outlets, and thermostats)," using a hand-held device.
(Id. at ¶ 19) Comcast provides Internet, video,
voice, and security services. (Id. at ¶ 24)
NexStep alleges that Comcast's modems, gateways, routers,
set-top boxes, remote controls, home security sensors and
video surveillance cameras, smartphone and tablet devices,
and smartphone applications for controlling and integrating
these devices are infringing products. (Id.) Comcast
"markets and sells these services, equipment and apps
under the Xfinity brand name ('Xfinity
alleges that on June 29, 2007, Dr. Stepanian met with
Comcast's Chief Technology Officer ("CTO") and
Director of Digital Technology and Standards to provide an
overview of NexStep's technology and explain how Comcast
could implement that technology in Internet, voice, video,
and Home services. (Id. at ¶ 20) Dr. Stepanian
provided examples of handheld devices for controlling and
integrating various services. (Id.) On August 23,
2007, Dr. Stepanian met with Comcast's Vice President of
Product Management and provided a written summary of
NexStep's remote control product and technology.
(Id. at ¶ 21) Dr. Stepanian noted that his
technology was covered by issued and pending patent
applications and provided further written materials to
Comcast after his meetings. (Id. at ¶¶
22-23) Ultimately, Comcast indicated that it would not work
with NexStep because it was developing its own similar
technology. (Id. at ¶ 23)
25, 2019, Comcast filed the present motion to dismiss. (D.I.
12(b)(6) permits a party to move to dismiss a complaint for
failure to state a claim upon which relief can be granted.
See Fed. R. Civ. P. 12(b)(6). When considering a
Rule 12(b)(6) motion to dismiss, the court must accept as
true all factual allegations in the complaint and view them
in the light most favorable to the plaintiff. See Umland
v. Planco Fin. Servs. Inc., 542 F.3d 59, 64 (3d Cir.
state a claim upon which relief can be granted pursuant to
Rule 12(b)(6), a complaint must contain a "short and
plain statement of the claim showing that the pleader is
entitled to relief." Fed.R.Civ.P. 8(a)(2). Although
detailed factual allegations are not required, the complaint
must set forth sufficient factual matter, accepted as true,
to "state a claim to relief that is plausible on its
face." Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570 (2007); see also Ashcroft v. Iqbal, 556
U.S. 662, 663 (2009). A claim is facially plausible when the
factual allegations allow the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged. See Iqbal, 556 U.S. at 663;
Twombly, 550 U.S. at 555-56.
court's determination is not whether the non-moving party
"will ultimately prevail," but whether that party
is "entitled to offer evidence to support the
claims." United States ex rel. Wilkins v.
UnitedHealth Grp., Inc., 659 F.3d 295, 302 (3d Cir.
2011). This "does not impose a probability requirement
at the pleading stage," but instead "simply calls
for enough facts to raise a reasonable expectation that
discovery will reveal evidence of [the necessary
element]." Phillips v. Cty. of Allegheny, 515
F.3d 224, 234 (3d Cir. 2008) (quoting Twombly, 550
U.S. at 556). The court's analysis is a context-specific
task requiring the court "to draw on its judicial
experience and common sense." Iqbal, 556 U.S.
plead willful infringement, a plaintiff must allege facts
plausibly showing that "as of the time of the
claim's filing, the accused infringer: (1) knew of the
patent-in-suit; (2) after acquiring that knowledge, it
infringed the patent; and (3) in doing so, it knew, or should
have known, that its conduct amounted to infringement of the
patent." Valinge Innovation AB v. Halstead New
England Corp., C.A No. 16-1082-LPS-CJB, 2018 WL 2411218,
at *13 (D. Del. May 29, 2018).
argues that NexStep fails to allege Comcast's pre-suit
knowledge of any of the asserted patents, which issued after
Dr. Stepanian's meetings with Comcast in 2007. (D.I. 11
at 5-8) NexStep argues that it has sufficiently pleaded
factual allegations of Comcast's knowledge of the
patents-in-suit. (D.I. 13 at 6-8 & n.l) The complaint
avers that Dr. Stepanian disclosed that his "technology
was covered by issued and pending patent applications."
(D.I. 1 at ¶ 22) Furthermore, the complaint claims that
Comcast's knowledge of NexStep's technology stems
from its negotiations with Dr. Stepanian. (Id. at
¶¶ 62, 85, 111, 134, 159, 179, 201, 236, 262) The
oldest patent-in-suit, the '130 patent, was issued on
October 28, 2008. (Id. at ¶ 10) The other
patents-in-suit were issued over the next several years, with
the most recent, the '697 patent, being issued on January
9, 2018. (Id. at ...