Case 1:22-cv-00304-RGA Document 28 Filed 11/14/22 Page 1 of 11 PageID #: 788
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ROBOCAST, INC.,
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`Plaintiff,
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`V.
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`YOUTUBE, LLC and GOOGLE, LLC,
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`Defendants.
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`Civil Action No. 22-304-RGA
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`MEMORANDUM
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`Before me is Defendants' motion to dismiss. (D.I. 11). The motion has been fully briefed
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`and I have considered the parties' briefing. (D.I. 12, 17, 18). For the reasons set forth below,
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`Defendants' motion is GRANTED in part and DENIED in part.
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`I.
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`BACKGROUND
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`This is a patent infringement action. On March 8, 2022, Plaintiff Robocast filed its
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`Complaint against Defendants Y ouTube and Google, alleging direct, indirect, and willful
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`infringement ofU.S. Patent Nos. 7,155,451 ("the '451 patent"), 8,606,819 ("the '819 patent"), and
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`8,965,932 ("the '932 patent") (collectively, "the asserted patents"). (D.1. 1). The asserted patents
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`relate to methods of automating the presentation of computer content. (Id at 5).
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`The asserted patents are related. All three share a common specification, as the '819 and
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`'932 patents are continuations of the '451 patent, and all three share a common priority date to a
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`provisional application filed on September 3, 1996. (Id at 4). Plaintiff filed the non-provisional
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`application that led to the '451 patent on September 1, 1998, andJhe patent" issued December 26,
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`2006. (D.1. 1-1, Ex. 1 at p. 1). Plaintiff filed a continuation application on December 21, 2005,
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`__ which issued on February 24, 2015 as the '932 patent. (D.1. 1-3, Ex. 3 at p. 1). Plaintiff filed a
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`second continuation application on April 18, 2012, whicp. issued on Dec. 10, 2013 as the '819
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`patent. (D.I. 1-2, Ex. 2 at p. 1).
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`During prosecution of the applications leading to the '819 and '932 patents, the Examiner ,
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`provisionally rejected pending claims for non-statutory dpuble patenting because the claims in
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`each of the applications were not "patentably distinct" from claims in the other. (D.I. 12-1, Ex. 1
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`at 11, Ex. 2 at 6). The Examiner also found that all pending claims of the '819 patent were invalid
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`for obviousness-type double patenting over claims 22-54 of the '451 patent. (D.I. 12-1, Ex. 1 at
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`11). Consequently, Plaintiff filed terminal disclaimers limiting the term of the '932 patent to that
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`of the '819 patent and limiting the term of the '819 patent to that of the '932 and '451 patents.
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`(D.I. 12-1, Ex. 3-4). The '819 and '932 patents therefore expired on the same date: September 2,
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`2017. (D.I. 12 at 1). The '451 patent expired on August 9, 2020, as Plaintiff received a 1~072-day
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`patent term adjustment (PTA) for that patent under 35 U.S.C. § 154(b). (D.I. 1-1, Ex. 1 at p. 1).
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`II.
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`LEGALSTANDARD
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`When reviewing a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6),
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`the Court must accept the complaint's factual allegations as true. See Bell At!. Corp. v. Twombly,
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`550 U.S. 544, 555-56 (2007). Rule 8(a) requires "a short and plain statement of the claim showing
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`that the pleader is entitled to relief." Id. at 555. The factual allegations do not have to be detailed,
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`but they must provide more than labels, conclusions, or a "formulaic recitation" of the claim
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`elements. Id. ("Factual allegations must be enough to raise a right to relief above the speculative
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`level . . . on the assumption that all the allegations in the complaint are true ( even if doubtful in
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`fact)."). Moreover, there must be sufficient factual matter to state a facially plausible claim to
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`relief. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The facial plausibility standard is satisfied when
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`the complaint's factual content "allows the court to draw the reasonable inference that the
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`Case 1:22-cv-00304-RGA Document 28 Filed 11/14/22 Page 3 of 11 PageID #: 790
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`defendant is liable for the misconduct alleged.'' Id. ("Where a complaint pleads facts that are
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`merely consistent with a defendant's liability, it stops short of the line between possibility and
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`plausibility of entitlement to relief." ( cleaned up)).
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`III. DISCUSSION
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`A.
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`Indirect and Willful Infringement of the '819 and '932 Patents
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`Defendants argue that Plaintiff has failed to state a claim for indirect and willful
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`infringement of the '819 and '932 patents because Plaintiff fails to plausibly allege knowledge of
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`the asserted patents before their expiration. (D.I. 12 at 7-8). I agree.
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`Indirect infringement requires, among other things, "knowledge of the patent in suit and
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`knowledge of patent infringement." Cammi! USA, LLC v. Cisco Systems, Inc., 575 U.S. 632, 639
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`(2015) (inducement and contributory infringement). A determination of willful infringement
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`requires a finding of "deliberate or intentional" infringement. SRI Int'!, Inc. v. Cisco Sys., Inc., 14
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`F.4th 1323, 1330 (Fed. Cir. 2021). The complaint must allege that the accused infringer knew of
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`the asserted patent and knowingly or intentionally infringed the patent after acquiring that
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`knowledge. Eko Brands, LLC ;_ Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378-79 (Fed.
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`Cir. 2020). With respect to both indirect and willful infringement claims, a plaintiff can meet the
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`knowledge requirement by showing "willful blindness," which "requires the patentee to show not
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`only that the accused subjectively believed that there was a high risk of infringement, but also that
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`the accused took deliberate actions to avoid confirming infringement." Unwired Planet, LLC v.
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`Apple Inc., 829 F.3d 1353, 1364 (Fed. Cir. 2016) (inducement). The knowledge requirement is not
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`met if plaintiff fails to allege that defendant acquired its knowledge before the expiration date of
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`the patent. E.g., Sprint Commc'ns Co., L.P v. Atl. Broadband Fin., LLC, 2021 WL 982735, at *1
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`(D. Del. Mar. 16, 2021) (granting summary judgment of no willful infringement because plaintiff
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`failed to "assert that it has any evidence that [defendant] knew of any of the currently asserted
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`patents before they expired.").
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`In its Complaint, Plaintiff alleges that Defendants had "actual and/or constructive
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`knowledge" of all three asserted patents beginning "no later than the 2018 to 2019 time frame"
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`(D.I. 1 at 13). According to Plaintiff, Defendants learned of the asserted patents through unrelated
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`Iitigation-Virentem Ventures, LLCv. YouTube, LLC, eta/., C.A. No. 1:18-cv-00917-MN (D. Del.
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`June 20, 2018)-in which Defendants "assert[ed] and rel[ied] upon the [asserted patents] as
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`allegedly being invalidating prior art in connection with efforts to defend [themselves] against
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`charges of patent infringement" (id.).
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`The problem with Plaintiff's theory is one of timing. The theory succeeds with respect to
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`the '451 patent; Defendants do not dispute that its invalidity contentions in Virentem satisfy the
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`knowledge requirement for that patent. However, whereas the '451 patent expired in 2020, the
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`'819 and '932 patents expired on September 2, 2017-that is to say, those patents expired before
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`the time frame in which Defendants are alleged to have gained knowledge of them. Plaintiff has
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`not pied any specific facts suggesting that Defendants knew of the '819 and '932 patents before
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`they expired. This, Defendants argue, is fatal to Plaintiff's claims for indirect and willful
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`infringement of those patents. (D.I. 12 at 8).
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`Plaintiff's response is that pre-expiration knowledge may be plausibly inferred from
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`Defendants' reliance on those patents in Virentem, as "Invalidity Contentions generally take weeks
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`or months to develop, and the prior art searching and subsequent analysis often occurs long before
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`the due date." (D.I. 17 at 17 n.5). Although it is certainly plausible that Defendants prepared their
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`invalidity contentions well before they first served them in 2019, 1 it is not plausible that
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`Defendants' preparation preceded the lawsuit itself, which was filed on June 20, 2018-9 months
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`after the '819 and '932 patents expired. Virentem Ventures, LLC v. YouTube, LLC, et al., No. 1:18-
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`cv-00917-MN (D. Del. June 20, 2018).
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`Nor am I convinced by Plaintiff's argument that it is plausible to infer pre-expiration
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`knowledge of the '819 and '932 patents because the claimed technology had "achieved notoriety
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`in the industry" before September of 2017. (D.I. 17 at 17). Industry notoriety can support a
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`reasonable inference of knowledge of a patent. See, e.g., BioMerieux, S.A. v. Hologic, Inc., 2018
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`WL 4603267, at *5 (D. Del. Sept. 25, 2018). The question is whether Plaintiff pleads industry
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`notoriety from which one can reasonably infer Defendants' awareness of the '819 and '932 patents
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`before they expired. I conclude that Plaintiff has not.
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`Contrary to Plaintiffs assertions, Defendants' use of the '819 and '93 2 patents in Virentem
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`does not "give[] rise to the inference that these patents were well known patents in the technology
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`space." (D.I. 17 at 17). "[P]arties often rely on obscure prior art to support invalidity arguments,"
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`as Defendants note in their reply. (D.I. 18 at 2).
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`I am equally unmoved by Plaintiff's argument regarding a press release issued by Microsoft
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`in December of 2001 that "confirmed that ... the technologies that would ultimately become
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`Robocast's patented inventions had earned it the reputation of being a 'pioneering Web company
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`offering viewing automation tools for a variety of display devices."' (D.1. 1 at 4). This court has
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`held that media publicity surrounding an invention does not support an allegation of pre-suit
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`knowledge absent allegations "bridging" knowledge of the publicity with knowledge of the patent.
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`1 Defendants assert, and Plaintiff does not dispute, that Defendants' initial invalidity contentions
`in that case were served on July 8, 2019. (D.1. 12 at 4).
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`See PPG Indus. Ohio, Inc. v. Axalta Coating Sys., LLC, 2022 WL 610740, at *4 (D. Del. Jan. 26,
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`2022). · In Axalta Coating, the court held that an industry award for the plaintiff's technology was
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`inadequate support of pre-suit knowledge in part because the plaintiff failed to allege that the award
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`, referenced the patent or disclosed that the technology was patented. Id Here, the "bridge" is even
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`shakier, as Microsoft's press release predated the issuance of the ~819 and '932 patents by more
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`than a decade.
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`r
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`The existence of "prominent national litigations" (D.I. 17 at 17 n.6) between Plaintiff and
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`third-party competitors over the'451 patent during the 2010-2012 time frame-while the '819 and
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`'932 patents were pending-does not help Plaintiff either. Filing a lawsuit over a patent does not
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`plausibly grant actual knowledge of that patent to an unrelated party. Chalumeau Power Sys. LLC
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`v. Alcatel-Lucent, 2012 WL 6968938, at *1 (D. Del. July 18, 2012). It is even less plausible that
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`litigation over a patent would grant an unrelated party knowledge of yet-to-be-issued patents
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`through the then-pendency of continuation applications. See iFIT Inc. v. Peloton Interactive, 2022
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`WL 609605, at *2 (D. Del. Jan. 28, 2022) "'("Knowledge of a patent application alone ... is not
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`enough to establish knowledge of the patent(s) that issued from that application").
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`For the reasons stated above, I conclude that Plaintiff has failed to adequately allege pre(cid:173)
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`suit knowledge of infringement of the '819 and '932 patents. I therefore GRANT Defendants'
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`motion to dismiss Plaintiff's willful infringement and indirect infringement claims with respect to
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`those patents.'
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`B.
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`Invalidation of the '451 Patent for Obviousness-Type Double Patenting
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`..
`Defendants argue that the '451 patent is invalid for obviousness-type double patenting
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`because its claims are not patentably distinct from those of either the '819 or '932 patents. (D.I. 12
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`at 11-20). A question central to the resolution of this issue-the interplay between obviousness-
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`type double-patenting and a patent term extension-is an open issue that is currently before the
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`Federal Circuit. In re: Cellect, LLC, Case No. 22-1293 (Fed. Cir.). Briefing appears to be complete;
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`no argument date is set. It seems reasonable to expect a decision within the first half of next year.
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`I therefore think it prudent to postpone the resolution of this issue until the Federal Circuit has
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`spoken.
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`Defendants' motion to dismiss claims involving the '451 patent because that patent is
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`invalid for obviousness-type double patenting is consequently DISMISSED with leave to refile
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`with updated briefing once the Federal Circuit decides In re: Cellect.
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`C. Willful Infringement of the '451 Patent
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`Defendants move to dismiss Plaintiff's claims for willful infringement of the '451 patent.
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`(D.I. 12 at 8-10). As stated above, to plead a claim of willful infringement, the complaint must
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`allege that the accused infringer knew of the asserted patent and knowingly or intentionally
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`infringed the patent after acquiring that knowledge. Eko Brands, LLC v. Adrian Rivera Maynez
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`Enters., Inc., 946 F.3d 1367, 1378-79 (Fed. Cir. 2020). Defendants do not dispute Plaintiff's
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`argument that Defendants' assertion of the '451 patent in Virentem granted Defendants knowledge
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`of the patent. What Plaintiff disputes is the adequacy of Defendants' allegation that Defendants
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`had pre-suit knowledge of infringement. (D.I. 12 at 8-10). I conclude that Defendants' allegation
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`is adequate.
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`After the Supreme Court's decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93
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`(2016), courts in this district have held that pre-suit knowledge of the asserted patent is not by
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`itself sufficient to support a willful infringement claim. E.g., Valinge Innovation AB v. Halstead
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`New England Corp., 2018 WL 2411218, at *13 (D. --Del. May 29, 2018), report and
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`recommend~tion adopted, 2018 WL 11013901 (D. Del. Nov. 6, 2018). Although knowledge of
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`the patent does not establish knowledge of infringement, knowledge of infringement may be
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`inferred from "the totality of the patentee's allegations." Id.
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`·,
`The totality of Plaintiffs allegations permit a plausible inference of pre-suit knowledge of
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`infringement. Plaintiff does not merely allege that the Virentem litigation granted Defendants
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`knowledge of the '451 patent; Plaintiff also alleges that, by virtue of Defendants' assertion of that
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`patent in Virentem, Defendants gained "an extensive familiarity with the scope and content" of the
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`'451 patent and its claims. (D.I. 1 at 13). This court has held that the defendant's high level of
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`familiarity with a patent is sufficient to give rise to a plausible inference of knowledge of
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`infringement. See BioMerieux, S.A. v. Hologic, Inc., 2018 WL 4603267, *5 (D. Del. Sept. 25,
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`2018) (finding plausible inference of knowledge on the basis of"defendant's years-long campaign
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`before the European Patent Office urging authorities to revoke the European counterparts to the
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`two U.S. patents-in-suit"); see also Ravgen, Inc. v. Ariosa Diagnostics, Inc., 2021 WL 3526178,
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`at *3 (D. Del. Aug. 11, 2021) (inferring pre-suit knowledge of infringement based in part on the
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`allegation that defendant "cited [plaintiff]' s patents against others by asserting them as prior art to
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`others' patents and making substantive arguments about them" in unrelated proceedings). I agree
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`with Plaintiff (D~I. 17 at 15) that the inference of knowledge is at least as plausible here as it was
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`in BioMerieux, where the court inferred knowledge from defendant's alleged familiarity with a
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`European counterpart of plaintiffs patent. 2018 WL 4603267 at *5. Here, Defendants' alleged
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`familiarity is with the actual asserted patent.
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`For the reasons stated above, I conclude that Plaintiff has adequately alleged pre-suit
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`knowledge of infringement of the '451 patent. I therefore DENY Defendants' motion to dismiss
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`Plaintiffs willful infringement claims with respect to that patent.
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`D.
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`Induced Infringement of the '451 Patent
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`Defendants move to dismiss Plaintiff's claims for induced infringement of the '451 patent.
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`(D.I. 12 at 10). For an inducement claim to survive a motion to dismiss, "a complaint must plead
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`'--
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`facts plausibly showing that the accused infringer specifically intended another party to infringe
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`the patent and knew that the other party's acts constituted infringement." Lifetime Indus., Inc. v.
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`Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017) (cleaned up).
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`Defendants argue that Plaintiff fails to allege the "specific intent" element. (D.I. 12 at 10).
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`"[S]pecific intent may be inferred from circumstantial evidence where a defendant has both
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`knowledge of the patent and specific intent to cause the acts constituting infringement." Ricoh Co.
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`v. Quanta Comput. Inc., 550 F.3d 1325, 1342 (Fed. Cir. 2008). "Evidence of active steps taken to
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`encourage direct infringement, such as advertising an infringing use or instructing how to engage
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`in an infringing use, show an affirmative intent that the product be used to infringe, and a showing
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`that infringement was encouraged overcomes the law's reluctance to find liability when a defendant
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`merely sells a commercial product suitable for some lawful use." Metro-Goldwyn Mayer Studios
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`Inc. v. Grokster, Ltd., 545 U.S. 913,936 (2005) (cleaned up).
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`Plaintiff's Complaint alleges that Defendants induced direct infringement of the '451
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`patent "through [Defendants'] Internet platform and associated [Defendant] apps software and
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`services by thereby providing, inter alia, functionality, instructions, and other assistance that have
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`served to facilitate,. promote, and cause [Defendants'] registered account holders, and/or
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`potentially others as yet unknown, to generate, edit, operate, use, publish, save, share, and/or
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`collaborate on infringing automated video playlists." (D.I. 1 at 17). Defendants argue that this is
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`insufficient to support an inference of specific intent because Plaintiff has not referenced acts by
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`Defendants beyond a formal recitation of the claim elements. (D.I. 12 at 10).
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`I reject Defendants' argument. As Plaintiff correctly notes, "Allegations that a defendant
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`instructs or otherwise encourages a customer's infringement are sufficient to state a claim for
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`inducement." (D.1. 17 at 16). This court found similar specific intent allegations sufficient to plead
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`inducement in Telecomm Innovations, LLC v. Ricoh Co., 966 F. Supp. 2d 390 (D. Del. 2013). The
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`allegations of the plaintiff in that case-that "defendants provided technical support and
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`instructions to their customers on how to use products in such a way as to infringe the patented
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`invention," id. at 395-are not distinguishable from Plaintiff's allegations that Defendants provide
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`"functionality, instructions, and other assistance" that serves to facilitate infringement by
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`Defendants' customers and others (D.I. 1 at 17).
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`I therefore conclude that Plaintiff has sufficiently alleged facts to state a claim for induced
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`infringement of the '451 patent and DENY Defendants' motion with respect to this patent.
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`E.
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`'Contributory Infringement of the '451 Patent
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`Finally, Defendants move to dismiss Plaintiff's claims for contributory infringement of the
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`'451 patent. (D.1. 12 at 10). To state a claim for contributory infringement, a complaint must plead
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`facts plausibly showing that (1) "there is direct infringement," (2) "the accused infringer had
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`knowledge of the patent," (3) "the component has no substantial noninfringing uses," and ( 4) ''the
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`component is a material part of the invention." Fujitsu Ltd v. Netgear Inc., 620 F.3d 1321, 1326
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`(Fed. Cir. 2010).
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`Defendants argue that the Complaint does not satisfy the "substantial noninfringing uses"
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`element because Plaintiff has failed to plead sufficient facts to render it plausible "that the accused
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`automated video playlists can only be used in an infringing way." (D.I. 12 at 10). "The Federal
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`Circuit has ruled that affirmatively pleading the absence of substantial non-infringing uses renders
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`the claim plausible if the pleadings do not undermine that allegation." Merck Sharp & Dohme
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`Case 1:22-cv-00304-RGA Document 28 Filed 11/14/22 Page 11 of 11 PageID #: 798
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`Corp. v. Teva Pharms. USA, Inc., 2015 WL 4036951, at *7 (D. Del. July 1, 2015) (citing In re Bill
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`of Lading, 681 F.3d 1323, 1339 (Fed. Cir. 2012)), report and recommendation adopted, 2015 WL
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`4477699 (D. Del. July 22, 2015).
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`Plaintiff's Complaint states that Defendants have infringed the '451 patent "under 35
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`U.S.C. § 271(c) ... knowing that [Defendants' allegedly infringing functionality] is not a staple
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`article or commodity of commerce suitable for substantial non-infringing use." (D.I. 1 at 17). This
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`"affirmative pleading [of] the absence of substantial non-infringing uses renders the claim
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`plausible." Merck Sharp & Dahme, 2015 WL 4036951, at *7; see also Express Mobile, Inc. v.
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`Squarespace, Inc., 2021 WL 3772040, at *5 (D. Del. Aug. 25, 2021) (holding that the complaint
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`met the plausibility pleading standard where the plaintiff stated that there was no substantial non(cid:173)
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`infringing use).
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`For these reasons, Defendants' motion to dismiss Plaintiff's contributory infringement
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`claim is DENIED as to the '451 patent.
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`IV. CONCLUSION
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`An appropriate order will issue.
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