Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 1 of 17 Page ID #:923
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`Aaron S. Jacobs (Cal. Bar No. 214953)
`ajacobs@princelobel.com
`James J. Foster
`jfoster@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
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`Matthew D. Vella (Cal. Bar No. 314548)
`mvella@princelobel.com
`PRINCE LOBEL TYE LLP
`357 S. Coast Highway, Suite 200
`Laguna Beach, CA 92651
`Tel: (949) 232-6375
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`Attorneys for Plaintiff
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`SANTA ANA DIVISION
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`Case No. 8:19-cv-01150-DOC-KES
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`(CONSOLIDATED)
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`PLAINTIFF’S OPPOSITION TO
`NETSUITE’S MOTION TO DISMISS FIRST
`AMENDED COMPLAINT
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`Case No. 8:19-cv-01151-DOC-KES
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`Plaintiff,
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`UNILOC 2017 LLC,
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`v.
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`INFOR, INC.,
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`Defendant.
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`UNILOC 2017 LLC,
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`v.
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`NETSUITE, INC.,
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`Plaintiff,
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`Defendant.
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`

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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 2 of 17 Page ID #:924
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`I.
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`II.
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`TABLE OF CONTENTS
`BACKGROUND ............................................................................................... 1
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`LEGAL STANDARDS ..................................................................................... 3
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`III. ARGUMENT..................................................................................................... 4
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`A.
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`B.
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`C.
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`Claim construction is inappropriate at this time. .................................... 4
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`“Construction of “application program.” ................................................ 4
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`The Amended Complaint states plausible claims for infringement. ....... 9
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`IV. CONCLUSION ............................................................................................... 13
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
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`Case No. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 3 of 17 Page ID #:925
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................ 3
`Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)) ...................................................... 3
`CLM Analogs, LLC v. James R. Glidewell Dental Ceramics, Inc., No. 8:18-cv-
`00311-JLS, 2018 WL 6380887 (C.D. Cal. Jun. 19, 2018) ................................. 3, 9
`Duncan Parking Techs., Inc. v. IPS Group, Inc., 914 F.3d 1347 (2019) .................... 7
`Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320 (Fed. Cir. 2019) ............................... 7
`Erickson v. Pardus, 551 U.S. 89 (2007) .................................................................. 3, 9
`Ferdik v. Bonzelet, 963 F.2d 1258 (9th Cir. 1992) ....................................................... 9
`Hearing Components, Inc. v. Shure, Inc., 600 F.3d 1357 (Fed. Cir. 2010) ................ 7
`Karl-Storz Endoscopy-Am., Inc. v. Integ. Med. Sys. Int’l, Inc., 400 F. Supp. 3d 1248
`(N.D. Ala. 2019) ..................................................................................................... 4
`Nellcor Puritan Bennett, Inc. v. Masimo Corp., 402 F.3d 1364 (Fed. Cir. 2005) ...... 7
`Network Signatures, Inc. v. ABN-AMRO, Inc., No. SA CV 06-629 JVS, 2006 WL
`8435019 (C.D. Cal. Oct. 30, 2006) ....................................................................... 10
`Neutrik AG v. ADJ Prods., LLC, No. LA CV19-09937, 2020 WL 6128066 (C.D.
`Cal. May 6, 2020) ................................................................................................... 4
`Phonometrics, Inc. v. Hosp. Franchise Sys., Inc., 203 F.3d 790 (Fed. Cir. 2000) 9, 10
`Trustees of Columbia Univ. v. Symantec Corp., 811 F.3 1359 (Fed. Cir. 2016) ........ 4
`Vellata, LLC v. Best Buy Co., Inc., No. 10-6753 AHM, 2011 WL 61620 (C.D. Cal.
`Jan. 7, 2011) ...................................................................................................... 9, 10
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ....................... 7
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
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`Case No. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 4 of 17 Page ID #:926
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`Plaintiff, Uniloc 2017 LLC (“Uniloc”), respectfully submits this Opposition to
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`the Motion (Dkt. No. 54) of defendant, NetSuite, Inc. (“NetSuite”), to Dismiss the
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`First Amended Complaint (“Mot.” or “Motion”). For the reasons set forth below, the
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`Motion should be denied.1
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`I.
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`BACKGROUND
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`NetSuite’s Motion is labeled as an Iqbal/Twombly motion to dismiss. Mot. at
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`12. But those cases dealt only with whether sufficient factual matter had been
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`pleaded, and NetSuite does not argue Uniloc’s Amended Complaint (“AC”) lacks
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`factual matter. Rather, NetSuite bases its Motion not on the quantity of facts
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`pleaded, but on its disagreement with the claim construction inherent to Uniloc’s
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`theory of infringement. The Motion is thus not a pleadings motion, but a thinly-
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`disguised motion for summary judgment.
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`NetSuite asserts the AC fails to demonstrate that the accused NetSuite
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`architecture infringes the ‘578 Patent or the ‘293 Patent (together “the Asserted
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`Patents”). To the extent the Motion is considered as an Iqbal/Twombly motion, the
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`authorities do not support it. As the Federal Circuit and this Court recently have
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`made clear, Uniloc is not required to prove its infringement case at this pleadings
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`stage of the case. See, e.g., Preservation Techs. LLC v. MindGeek USA, Inc., No. 17-
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`8906-DOC, 2019 WL 3213585, at *2 (C.D. Cal. Apr. 2, 2019) (citing Nalco Co. v.
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`Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018)). Uniloc need only state a
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`plausible claim for infringement of each asserted patent. See, e.g., TeleSign Corp. v.
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`Twilio, Inc., No. 16-2106 PSG, 2016 WL 4703873, at *3 (C.D. Cal. Aug. 3, 2016).
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`As set forth below, Uniloc has done that. See Preservation Techs., 2019 WL
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`3213585, at *2 (complaint is sufficient when it places the alleged infringer on notice
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`As the Ninth Circuit has a liberal policy favoring amendments, leave to amend
`should be freely granted. See, e.g., Julbo, Inc. v. Oakley, Inc., No. SA CV 17-1022-
`DOC, 2018 WL 2329151, at *2 (C.D. Cal. Jan. 19, 2019). Should the Court deem
`the AC in any way deficient, Uniloc requests leave to amend.
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
`
`Case No. 8:19-cv-01150-DOC-KES
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`of the activity being accused of infringement). Further, on a motion to dismiss,
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`courts must accept as true such well-pleaded factual allegations of the AC and
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`construe all factual inferences in the light most favorable to Uniloc. See Manzarek v.
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`St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). The AC
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`complies with current pleading requirements.
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`NetSuite asks the Court, on a pleadings motion, to construe “application
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`program,” a term found in the claims of the Asserted Patents, and to rule that, under
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`NetSuite’s proposed construction, the AC did not plead the correct facts.
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`NetSuite relies upon an interlocutory – and erroneous – construction that had
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`been entered In the Eastern District of Texas. But the court there ruled that the
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`interlocutory construction was not the law-of-the-case, and that Uniloc had not
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`waived its right to continue to contest it. See Uniloc USA, Inc. v. ADP, LLC, No.
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`2:16-cv-00741, Dkt. No. 364, at 12 (E.D. Tex. Feb. 5, 2020). That court also stated
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`that, as claim construction is performed on a rolling basis, it may revisit and alter its
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`construction as that case proceeds.2 Because that interlocutory construction did not
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`create issue preclusion, this Court will perform its own construction.
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`NetSuite also cited an interlocutory order in a pending action in
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`Massachusetts, which contains the same erroneous construction, but NetSuite does
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`not argue that order created issue preclusion. That court may reconsider that
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`construction before or at trial, but if it does not, Uniloc will challenge that
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`construction on appeal.
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`As set forth below, Uniloc believes that the construction of “application
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`program” NetSuite relies upon here is erroneous. In any event, as also set forth
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`below, a properly instructed jury could reasonably determine that the accused
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`products infringe even under NetSuite’s claim construction. Thus, as Uniloc is not
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`The case was later settled. Foster Decl., ¶ 8.
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
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`Case No. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 6 of 17 Page ID #:928
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`required to prove infringement at this pleadings stage of the case, the Motion should
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`be denied.
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`II. LEGAL STANDARDS
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`Pursuant to Federal Rule of Civil Procedure 8(a)(2), a complaint need only
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`contain “a short and plain statement of the claim showing that the pleader is entitled
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`to relief.” Thus, “[t]o survive a motion to dismiss, a complaint must contain
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`sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible
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`on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “When deciding a Rule
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`12(b)(6) motion, the court must accept the facts pleaded in the complaint as true, and
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`construe them in the light most favorable to the plaintiff.” Faulkner v. ADT Sec.
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`Servs., Inc., 706 F.3d 1017, 1019 (9th Cir. 2013.
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`“The plausibility standard ‘does not impose a probability requirement at the
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`pleading stage; it simply calls for enough facts to raise a reasonable expectation that
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`discovery will reveal evidence’ to support the plaintiff’s allegations.” Nalco, 883
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`F.3d at 1350. “Specific facts are not necessary; the statement need only ‘give the
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`defendant fair notice of what the . . . claim is and the ground upon which it rests.’”
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`Erickson v. Pardus, 551 U.S. 89, 93 (2007) (citing Bell Atl. Corp. v. Twombly, 550
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`U.S. 544, 555 (2007)).3 Moreover, the Federal Circuit has stated that, in patent
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`cases, “the Federal Rules of Civil Procedure do not require a plaintiff to plead facts
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`establishing that each element of an asserted claim is met.” Nalco, 883 at 1350; see
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`also CLM Analogs, LLC v. James R. Glidewell Dental Ceramics, Inc., No. 8:18-cv-
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`00311-JLS, 2018 WL 6380887, at *3 (C.D. Cal. Jun. 19, 2018).
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`“[W]hile [a] Defendant’s argument about the correct construction of [a] term
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`. . . may ultimately have merit, to accept Defendant’s arguments [in the context of a
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`As courts have also noted, in cases involving computers (such as here), a
`plaintiff’s ability to describe the infringing acts is hampered by a lack of access to
`the defendant’s source code. See, e.g., Preservation Techs., 2019 WL 3213585, at
`*3.
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
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`Case No. 8:19-cv-01150-DOC-KES
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`Rule 12(b)(6) motion to dismiss] would require the Court to do exactly what the
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`Federal Circuit has cautioned against” in Nalco, In re Bill of Lading, 681 F.3d 1323,
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`1343 n. 13 (Fed. Cir. 2012) and Trustees of Columbia Univ. v. Symantec Corp., 811
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`F.3d 1359, 1362 (Fed. Cir. 2016). CLM Analogics, 2018 WL 6380887, at *4.
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`III. ARGUMENT
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`NetSuite’s argument is found on pages 11-17 of its brief. All but the last page
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`are directed to claim construction.
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`A. Claim construction is inappropriate at this time.
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`As set forth above, per the Federal Circuit, resolution of claim construction
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`disputes “is particularly inappropriate in the Rule 12(b)(6) context.” See Nalco, 883
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`F.3d at 1349. In that case, the defendant argued the plaintiff could not show
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`infringement due to narrowing statements made during reexamination proceedings.
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`Id. Similarly, here, NetSuite makes a claim construction argument based upon a
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`statement made during prosecution of a patent not involved in this action. See Mot.
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`at 2. The interlocutory construction of “application program” NetSuite relies upon is
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`not final, has yet to be appealed, and is disputed by Uniloc. Accordingly, as in
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`Nalco, claim construction is “particularly inappropriate in the Rule 12(b)(6)
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`context”; see also Karl-Storz Endoscopy-Am., Inc. v. Integ. Med. Sys. Int’l, Inc., 400
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`F. Supp. 3d 1248, 1255 (N.D. Ala. 2019) (in view of Nalco, on a motion to dismiss,
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`the Court “cannot commit itself to the claim construction IMS offers, which would
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`exclude the allegedly infringing endoscopes.”) Judge Kronstadt recently reached the
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`same conclusion. See Neutrik AG v. ADJ Prods., LLC, No. LA CV19-09937, 2020
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`WL 6128066, at *3 (C.D. Cal. May 6, 2020); see also CLM Analogs, 2018 WL
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`6380887, at *4. Thus, NetSuite’s Motion, based entirely upon a claim construction
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`argument, should be denied.
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`B.
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`“Construction of “application program.”
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`Should the Court nonetheless address NetSuite’s claim construction argument,
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`this section sets forth Uniloc’s position.
`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 8 of 17 Page ID #:930
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`NetSuite bases its Motion entirely on a proposed construction of “application
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`program,” and asked this Court to construe that term to exclude application
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`programs that execute in a browser.
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`Uniloc contends “application program” should be given its ordinary meaning,
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`which is software that performs tasks for an end-user. That construction is supported
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`by the testimony of Dr. Michael Shamos:
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`64.
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`If ever there was a computer term having a plain and ordinary
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`meaning, will “application program” would be such a term. The term
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`“application program” was used to distinguish user program[s], with which
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`the user interacts directly, from operating system programs, which operate
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`invisibly to the user, and it[s] meaning has not changed over decades. This
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`notion is supported by Barron’s Dictionary of Computer and Internet Terms
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`(Sixth Ed., 1998) Ex. E, which defines “application program” as “a computer
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`program that performs useful work not related to the computer itself.” It is
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`also consistent with the definition in the Microsoft Computer Dictionary
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`(Third Edition, 1997) Ex. F: “A program designed to assist in the performance
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`of a specific task, such as word processing, accounting or inventory
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`management.
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`65. There is no indication that the term “application program”in the
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`Patent is used in anything other than its plain and ordinary meaning. In fact, the
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`entire tenor of the Patents revolves around distributing and managing the
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`execution of quote application programs,” without any intention of limiting that
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`term. . . .
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`69. The term “application program” has been construed by several
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`courts as “software that performs tasks for an end-user.” [Citations omitted.]
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`. . .
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`71. Further, there is no support in the specification for the limitation
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`“separate application from a browser interface and does not execute within the
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 9 of 17 Page ID #:931
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`browser window.” The term “browser window” does not appear anywhere in
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`the intrinsic evidence, and “browser interface” is used only once in the
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`specification, at [‘578 patent]10:56-63, without any indication that the browser
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`window is required to be separate from the application program. Nothing, for
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`example, progress application program from itself being a browser.
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`72.
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`I do not find any portion of the ‘578 patent containing, or
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`otherwise supporting, the notion that an application program cannot execute
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`with a browser window. The ‘578 patent specification at 8:7-20 states:
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`It is further to be understood that, in the JAVA TM environment,
`currently available web browser applications are known to those of skill
`in the art which provide a user interface and allow hardware
`independent communication such as that currently specified by Internet
`protocols. Thus, the application launcher programs may be applets
`which display the icon which are associated with a web browser
`Universal Resource Locator (URL) which points to the location of the
`applet to be executed. Upon selection of the icon displayed by the
`application launcher, the selected application is “launched” by
`requesting the URL of the application from the on-demand server. Such
`request may be made utilizing conventional Hyper- Text Transfer
`Protocol (HTTP) communications or other suitable protocols.
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`73. The above passage describes an exemplary situation in which the
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`application is literally executed within the browser window. A Java applet is a
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`hardware- and operating system-independent piece of code, written in a
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`language known as Java bytecode, which is downloaded to a client and
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`executed using software known as a “Java Virtual Machine” (JVM). All major
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`browsers implemented a JVM; otherwise, they would not have been able to
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`support webpages containing Java applets. Thus, Defendants’ proposed
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`construction of claim 1 would not read on this embodiment.
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 10 of 17 Page ID #:932
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`75. Because the passage at 8:7-20 is exemplary only (i.e., the ‘578
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`patent is not confined to Java applets), there is no language in that passage
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`either requiring or forbidding an application to run in a browser window.
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`Foster Decl., ¶ 7, Ex. 6.
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`A construction of the term “application program” that excludes an application
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`that executes in a browser would be legally incorrect. Per the Federal Circuit, a claim
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`construction that excludes a preferred embodiment is “rarely, if ever, correct.” See,
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`e.g., Nellcor Puritan Bennett, Inc. v. Masimo Corp., 402 F.3d 1364, 1368 (Fed. Cir.
`
`2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
`
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`1996)). As Dr. Shamos describes above, the specification of the ‘578 Patent discloses
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`a preferred embodiment wherein the application is executed within the browser
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`window. See ‘578 Patent at 8:7-20; see also ‘293 Patent at 9:45-59.
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`As the foregoing demonstrates, the specification and claims clearly do not
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`exclude an embodiment in which the application program is executed at the browser.
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`Accordingly, a claim interpretation that excludes such an embodiment would be
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`incorrect. See, e.g., Vitronics, 90 F.3d at 1583; see also Duncan Parking Techs., Inc.
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`v. IPS Group, Inc., 914 F.3d 1347, 1364 (2019). Thus, the asserted claims should be
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`construed to include such a disclosed and claimed embodiment.
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`Further, imposing such a limitation on the claims of the ‘293 Patent makes no
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`sense. The claims of the ‘293 Patent are directed to transmitting applications from a
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`network management server to an intermediate on-demand server. They are not
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`directed to where those applications are executed. Thus, whether or not the application
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`program is executed in the browser would be irrelevant. See, e.g., Eli Lilly & Co. v.
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`Hospira, Inc., 933 F.3d 1320, 1328-29 (Fed. Cir. 2019); see also Hearing
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`Components, Inc. v. Shure, Inc., 600 F.3d 1357, 1367-68 (Fed. Cir. 2010), abrogated
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`on other grounds, Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).
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`The Motion does not itself get into the details of claim construction beyond
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`simply referring to the other District Court opinions, as if their construction were
`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`Case No. 8:19-cv-01150-DOC-KES
`DISMISS
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 11 of 17 Page ID #:933
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`correct, Mot. at 12-15, even though Uniloc has contested that construction. See
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`Foster Decl., ¶ ¶ 3-4, Exs. 2-4, 6.
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`NetSuite misleadingly states Uniloc did not object to the erroneous
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`construction of “application program” with respect to a patent not asserted here, the
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`‘466 patent. But Netsuite omitted Uniloc’s explanation, which was that limitations in
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`those claims other than “application program” ruled out execution within the
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`browser window:
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`Uniloc does not object to that construction, as applied to the ‘466
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`patent. [T]he statements reasonably describe the invention of the claims of the
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`‘466 patent. The claims of that patent literally require “providing an instance
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`of the . . . application . . . to the client for execution,” seemingly ruling out
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`executing remotely within the browser window.
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`But a POSITA would not understand the statements as applying to the
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`inventions claimed in the other three patents, as those claims omit any such
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`requirements. Legal issues aside, the statements would make no sense, if they
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`had appeared in the prosecution history of the other patents.4
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`4
`The portion of the Motion that discusses whether the prosecution history of
`the ‘466 patent can be considered in construing claims of the ‘578 patent, Mot. at 13-
`15, is a red herring. Uniloc has never disputed the prosecution history of the ‘466
`patent may be considered in construing the ‘273 patent, because the latter is a
`continuation of the ‘466 patent. As “application program” appears in claims of the
`‘273 patent, the ‘466 prosecution history may be considered, for what it is worth, as
`to construction of that term in the ‘273 patent.
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`The prosecution history issue NetSuite raises relates only to the construction
`of “application launcher,” because that term that does not appear in claims of the
`‘273 patent, but only in claims of the ‘578 patent. Because NetSuite has not raised
`the construction of “application launcher” as an issue on its Motion, this Opposition
`will not discuss the prosecution history issue further.
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
`
`Case No. 8:19-cv-01150-DOC-KES
`8
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 12 of 17 Page ID #:934
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`C. The Amended Complaint states plausible claims for
`infringement.
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`Contrary to NetSuite’s arguments, the AC satisfies the current pleading
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`requirements in patents cases.5 To state a plausible claim for infringement, a
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`complaint need identify the accused technology in order to put the defendant on
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`notice of the infringing activity. See Preservation Techs., 2019 WL 3213585, at *2.
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`As the Supreme Court has stated, “[s]pecific facts are not necessary; the statement
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`need only ‘give the defendant fair notice of what the . . . claim is and the ground
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`upon which it rests.’” Erickson v. Pardus, 551 U.S. at 93 (citing Twombly, 550 U.S.
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`at 555). Consistent therewith, the Federal Circuit has stated that, in patent cases, “the
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`Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing
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`that each element of an asserted claim is met.” Nalco, 883 F.3d at 1350; see also
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`CLM Analogs, 2018 WL 6380887, at *3. The AC complies with these standards.
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`Per the Federal Circuit, a complaint satisfies the pleading requirements when
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`it: “[1] alleges ownership of the asserted patent, [2] names each individual
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`defendant, [3] cites the patent that is allegedly infringed, [4] describes the means by
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`which the defendants allegedly infringe, and [5] points to the specific sections of the
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`patent law invoked.” Phonometrics, Inc. v. Hosp. Franchise Sys., Inc., 203 F.3d 790,
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`794 (Fed. Cir. 2000); see also Vellata, LLC v. Best Buy Co., Inc., No. 10-6753
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`AHM, 2011 WL 61620, at *4 (C.D. Cal. Jan. 7, 2011). The AC complies with these
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`five requirements:
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`[1] Ownership - AC at ¶ 5 (‘578), ¶ 18 (‘293);
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`[2] Defendant’s name - AC at ¶ 2;
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`[3] Patent No. - AC at ¶ ¶ 5 (‘578), ¶ 18 (‘293);
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`The operative pleading is the AC, the filing of which renders the original
`complaint null and void. See, e.g., Ferdik v. Bonzelet, 963 F.2d 1258, 1262 (9th Cir.
`1992) (“[A]fter amendment the original pleading no longer performs any function
`and is treated thereafter as non-existent”) (internal quotation marks omitted).
`Accordingly, Uniloc will not respond here to NetSuite’s comments/arguments
`regarding the original complaint.
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
`
`Case No. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 13 of 17 Page ID #:935
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`[4] Infringing activity - AC at ¶¶ 7-11 (‘578), ¶¶ 19-22 (‘293);6
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`[5] Statute - AC at 3.
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`Under Phonometrics, that should end the matter. The Motion should be
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`denied. See Vellata, 2011 WL 61620, at *4; see also Network Signatures, Inc. v.
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`ABN-AMRO, Inc., No. SA CV 06-629 JVS, 2006 WL 8435019, at **4-5 (C.D. Cal.
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`Oct. 30, 2006).
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`Should the Court deem it necessary to consider the Motion further, the AC is
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`not required to present NetSuite with an element-by-element infringement analysis.
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`See, e.g., Nalco, 883 F.3d at 1350; see also Preservation Techs, 2019 WL 3213585,
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`at *2. Ipso facto, a full infringement analysis is not required.7 Uniloc need only put
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`NetSuite on notice of the activity that is alleged to infringe. Nalco, 883 F.3d at 1350.
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`The AC does that.
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`NetSuite’s arguments contra should be rejected. Uniloc’s AC adequately
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`pleads infringement even under the prior courts’ constructions. At this stage, the
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`issue is whether the AC “place[s] the infringer on notice.” See, e.g., Phonometrics,
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`203 F.3d at 794. The AC does that.
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`Claim 1 of the ‘293 patent reads:
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`A method for distribution of application programs to a target on-
`1.
`demand server [TODS] on a network comprising the following
`executed on a centralized network management server coupled to the
`network:
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`providing an application program to be distributed to the network
`management server;
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`specifying a source directory and a target directory for
`distribution of the application program;
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`preparing a file packet associated with the application program
`and including a segment configured to initiate registration operations
`for the application program at the target on-demand server; and
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`NetSuite only challenges compliance with this fourth element.
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`That burden does not arise until Infringement Contentions are due to be
`served. Neutrik, 2020 WL 6128066, at *2.
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
`
`Case No. 8:19-cv-01150-DOC-KES
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 14 of 17 Page ID #:936
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`distributing the file packet to the target on-demand server to
`make the application program available for use by a user at a client.
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`D.I. 1, Ex. B at 21:23-37. NetSuite’s motion rest entirely on its application of the
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`prior, erroneous construction of “application program.” Mot. at 16. NetSuite does not
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`contest that the AC adequately pleads facts that plausibly show that NetSuite’s
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`accused product meets all other claim limitations.
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`According to the prior construction, the “application program” found in claim
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`1 means “the code associated with the underlying program functions that is: [1] a
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`separate application from a browser interface, and [2] does not execute within the
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`browser window.” D.I. 46-4 at 19. Although Uniloc disagrees with this construction,
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`the AC alleges facts that plausibly support a claim for infringement under this
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`construction.
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`According to NetSuite, it provides the #1 Cloud-based ERP system in the
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`world. Tollefson Declaration, Ex. A at 1. As the AC avers, NetSuite used cloud
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`software to distribute application programs. AC at ¶ 7.8 Cloud-based applications
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`execute in the cloud, i.e., on NetSuite’s servers. Tollefson Decl., Ex. B. Accordingly,
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`the AC pleads that the “application program is software written to perform a
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`particular function for a user . . . which is designed to operate on a network.” AC at
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`¶ 6 (bold italics added). Uniloc explained that “[a]n application program can be
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`executed on a server within a user’s browser window.” Id. (bold italics added).
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`“NetSuite used cloud software to distribute application programs, including ERP,
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`CRM, and PSA, to authorized users.” Id. at ¶ 7 (bold italics added). This reads
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`directly on the step of “distributing the file packet to the target on-demand server to
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`make the application program available for use by a user at a client.” Moreover, by
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`using the Cloud, NetSuite’s servers perform the specifying step and the preparing
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`step of the ‘293 patent because that is how the cloud works.
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`Paragraphs 4-16 are found in Count I that pleads infringement of the ‘578
`Patent. Those allegations are incorporated by reference into Count II that pleads
`infringement of the ‘293 patent. See AC at ¶ 17.
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`PLAINTIFF’S OPPOSITION TO NETSUITE’S MOTION TO
`DISMISS
`
`Case No. 8:19-cv-01150-DOC-KES
`11
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`Case 8:19-cv-01150-DOC-KES Document 62 Filed 11/06/20 Page 15 of 17 Page ID #:937
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`The AC clearly alleges that NetSuite’s cloud-based system – and there is no
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`dispute its system is cloud-based – infringes the’293 patent.9 Cloud based systems do
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`not execute in the browser window; they can be accessed thereby for use by a user at
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`a client, but are executed on servers in the cloud. Tollefson Decl., Ex. B. Thus, the
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`AC pleads facts adequate to plausibly allege that NetSuite infringes at least claim 1 of
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`the ‘293 patent.
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`NetSuite’s arguments regarding the ‘578 add nothing to the above. For the
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`same reasons, NetSuite’s arguments fail because Uniloc’s AC adequately pled
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`infringement of the ‘578 patent under the prior Courts’ constructions.
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`Claim 1 of the ‘578 patent reads:
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`A method for management of configurable application programs
`1.
`on a network comprising the steps of:
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`installing an application program having a plurality of
`configurable preferences and a plurality of authorized users on a server
`coupled to the network;
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`distributing an application launcher program associated with the
`application program to a client coupled to the network;
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`obtaining a user set of the plurality of configurable preferences
`associated with one of the plurality of authorized users executing the
`application launcher program;
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`obtaining an administrator set of the plurality of configurable
`preferences from an administrator; and
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`executing the application program using the obtained user set and
`the obtained adminis