Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`IRONBURG INVENTIONS LTD.
`
`Plaintiff,
`
`v.
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`COLLECTIVE MINDS GAMING
`CO. LTD.
`
`Defendant.
`
`Civil Action No. 1:16-cv-04110-TWT
`
`DEFENDANT’S MOTION TO DISMISS PLAINTIFF’S DIRECT
`INFRINGEMENT CLAIMS, AND MEMORANDUM OF LAW IN SUPPORT
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`IRONBURG INVENTIONS LTD.
`
`Plaintiff,
`
`v.
`
`COLLECTIVE MINDS GAMING
`CO. LTD.
`
`Defendant.
`
`Civil Action No. 1:16-cv-04110-TWT
`
`DEFENDANT’S MOTION TO DISMISS PLAINTIFF’S DIRECT
`INFRINGEMENT CLAIMS, AND MEMORANDUM OF LAW IN SUPPORT
`
`
`
`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 2 of 9
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`Defendant Collective Minds Gaming Co. Ltd. (“Collective Minds”) moves to
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`dismiss Plaintiff Ironburg Invention Ltd.’s (“Ironburg”) claims for direct
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`infringement of U.S. Patent Nos. 8,461,525; 9,089,770; 9,289,688; 9,352,229; and
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`9,308,450 (collectively the “Patents-in-Suit”) pursuant to Federal Rule of Civil
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`Procedure 12(b)(6). The Complaint alleges that the Patents-in-Suit are infringed
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`when one of two Collective Minds products is combined with a third party video
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`game controller to form a “Modified Controller” and further alleges that Collective
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`Minds directly infringes by making and advertising the “Modified Controller.”
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`Because direct infringement pursuant to 35 U.S.C. § 271(a) requires the infringer
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`make, use, offer to sell or sell a product that embodies the entirety of the patented
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`invention and the Complaint acknowledges that Collective Minds is responsible for
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`only a component of the allegedly infringing “Modified Controller,” the Complaint
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`fails to state a claim for direct infringement.
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`MEMORANDUM OF LAW
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`I.
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`BACKGROUND
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`Plaintiff admits that “each and every claim” of the Patents-in-suit “is directed
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`to a gaming controller.” Dkt. No. 1, Complaint at ¶¶ 18, 26, 34, 42, 50. Plaintiff
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`further admits that the accused Collective Minds products are not gaming
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`controllers, but are instead modules intended to modify third party gaming
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`1
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`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 3 of 9
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`controllers. Id. at ¶¶ 17, 25, 33, 41, 49 (noting Defendant’s products are “intended
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`to modify Xbox One gaming controllers”—products sold by third party, Microsoft).
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`Plaintiff refers to the combination of the Collective Minds module and third party
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`Microsoft’s gaming controller as a “Modified Controller.”
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`Id. Despite
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`acknowledging that Collective Minds does not make or sell any “Modified
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`Controller,” Counts I-V of the Complaint allege that “Defendant directly infringes”
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`the Patents-in-Suit “by making the [] Modified Controller and advertising it to
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`customers in the United States.”1 Id. at ¶¶ 19, 27, 35, 43, 51.
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`II. LEGAL STANDARD
`Under Fed. R. Civ. P. 8(a)(2), a pleading must contain a “short and plain
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`statement of the claim showing that the pleader is entitled to relief. Iqbal, 556 U.S.
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`at 677-678. To survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6), "a
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`complaint must contain sufficient factual matter, accepted as true, to 'state a claim
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`to relief that is plausible on its face.'" Id. at 678 (citing Twombly, 550 U.S. at 555).
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`To state a claim for direct infringement, the Complaint must plausibly allege that
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`Collective Minds “makes, uses, offers to sell, or sells” a product that infringes the
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`1 Separately, and not challenged in the instant motion, Counts I-V further allege
`that Collective Minds is indirectly liable for inducing its customers to create and
`use the “Modified Controller.” Id. at 21, 29, 37, 45, 53.
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`2
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`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 4 of 9
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`claimed inventions of the Patents-in-Suit. 35 U.S.C. § 271(a); see also Aro Mfg. Co.
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`v. Convertible Top Replacement Co., 365 U.S. 336, 340 (1961) (holding “the
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`manufacture and sale” of a component that does not by itself practice the patent
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`claims “is not a direct infringement under 35 U.SC. 271(a)”). As Igbal/Twombly
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`make clear, implausible claims must be eliminated at the earliest possible stage of
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`litigation. Twombly, 550 U.S. at 558 (“[W]hen the allegations in a complaint,
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`however true, could not raise a claim of entitlement to relief, ‘this basic deficiency
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`should . . . be exposed at the point of minimum expenditure of time and money by
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`the parties and the court.’”).
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`III. ARGUMENT
`Plaintiff’s Complaint confuses the standards for direct and indirect
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`infringement. Namely, the Complaint alleges that Collective Minds induces its
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`customers to modify third party gaming controllers using its modules, which results
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`in a “Modified Controller” that allegedly practices the claims of the Patents-in-Suit.
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`Dkt. No. 1, Complaint at ¶¶ 21, 29, 37, 45, 53. Thus, Ironburg adequately pleads
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`indirect infringement pursuant to 35 U.S.C. § 271(b). However, Ironburg’s
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`allegation that Collective Minds can further be held liable for direct infringement
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`related to the “Modified Controller” is wholly inconsistent with the law and must be
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`3
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`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 5 of 9
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`dismissed. Collective Minds’ modules cannot, on their own, practice the claims of
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`the Patents-in-Suit.
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`The Complaint is unambiguous that Collective Minds’ products must be
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`combined with a third party product in order to infringe the Patents-in-Suit. Namely,
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`the Complaint alleges that Collective Minds sells two modules that are intended to
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`modify a third party gaming controller—Strike Pack and Trigger Grips. When those
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`modules are combined with a third party gaming controller, the result is what the
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`Complaint refers to as a “Modified Controller.” Id. at ¶¶ 17, 25, 33, 41, 49 (noting
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`Defendant’s products are “intended to modify Xbox One gaming controllers”—
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`products sold by third party, Microsoft). Allegations of infringement in the
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`Complaint do not capture to Collective Minds’ products on their own, but are instead
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`directed to the “Modified Controller,” i.e., the combination of Collective Minds’
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`products and a third party’s gaming controller. Id. at ¶¶ 19-21, 27-29, 35-37, 43-45,
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`51-53.
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`To be held liable for direct infringement, the accused infringer must make,
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`use, sell or offer to sell a product that meets all limitations of a patent claim. Aro,
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`365 U.S. at 340; see also Cimiotti Unhairing Co. v. American Fur Refining Co., 198
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`U.S. 399, 410 (1905) (“[N]o one is an infringer of a combination claim unless he
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`uses all the elements thereof.”). Because the Complaint does not allege that
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`4
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`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 6 of 9
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`Collective Minds makes, uses, sells or offers to sell a product that satisfies any claim
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`in the Patents-in-Suit, Ironburg’s direct infringement allegations should be
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`dismissed. See Lifetime Indus., Inc. v. Trim-Lok, Inc., No. 3:13-cv-819-RLM, 2016
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`WL 5724451, at *4 (N.D. Ind. Sept. 30, 2016) (dismissing direct infringement claims
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`where accused infringer “‘makes, uses, and sells’ only one of the two components
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`that makes up the ‘patented invention’”).
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`IV. CONCLUSION
`For the foregoing reasons, Collective Minds respectfully requests that this
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`Court dismiss Plaintiff’s claims for direct infringement.
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`
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`Dated: February 24, 2017
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`
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`Respectfully submitted,
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`HILL, KERTSCHER & WHARTON, LLP
`
`
`
`/s/ Steven G. Hill
`Steven G. Hill, GA Bar No. 354658
`Martha L. Decker, GA Bar No. 420867
`3350 Riverwood Parkway, Suite 800
`Atlanta, Georgia 30339
`Telephone: (770) 953-0995
`Facsimile: (770) 953-1358
`Email:
`sgh@hkw-law.com
`
`
`md@hkw-law.com
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`ERISE IP, P.A.
`Eric A. Buresh, admitted pro hac vice
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
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`5
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`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 7 of 9
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`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Email:
`eric.buresh@eriseip.com
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`ERISE IP, P.A.
`Paul R. Hart, admitted pro hac vice
`Michelle A. Callaghan, pending pro hac vice
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Email: paul.hart@eriseip.com
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` michelle.callaghan@eriseip.com
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`Attorneys for Defendant Collective
`Minds Gaming Co. Ltd
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`6
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`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 8 of 9
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`CERTIFICATE OF COMPLIANCE WITH LOCAL RULE 7.1D
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`
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`Pursuant to LR 7.1(D), the undersigned counsel certifies that this motion has
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`been prepared using Times New Roman 14-point font, as permitted under LR 5.1(C).
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`Dated: February 24, 2017
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`Respectfully submitted,
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`/s/ Steven G. Hill
`Steven G. Hill
`GA Bar No. 354658
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`
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`Attorney for Defendant
`Collective Minds Gaming Co. Ltd.
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`Case 1:16-cv-04110-TWT Document 14 Filed 02/24/17 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`The undersigned counsel hereby certifies that on February 24, 2017, a true
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`and correct copy of the DEFENDANT’S MOTION TO DISMISS PLAINTIFF’S
`DIRECT INFRINGEMENT CLAIMS AND MEMORANDUM OF LAW IN
`SUPPORT was filed with the Clerk of Court using the CM/ECF system, which will
`automatically send email notification of such filing to the following attorneys of
`record:
`
`
`Cynthia R. Parks
`Parks IP Law LLC
`730 Peachtree St. NE, Suite 600
`Atlanta, GA 30308
`T: 678.365.4444
`F: 678.365.4450
`cparks@parksiplaw.com
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`The undersigned counsel further certifies that on February 24, 2017, a copy
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`of the foregoing was sent to the following counsel for Plaintiff via electronic mail:
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`Robert D. Becker
`Manatt, Phelps & Phillips, LLP
`1841 Page Mill Road, Suite 200
`Palo Alto, CA 94304
`T: 650.812.1300
`F: 650.213.0260
`rbecker@manatt.com
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`Dated: February 24, 2017
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`Respectfully submitted,
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`/s/ Steven G. Hill
`Steven G. Hill
`Georgia Bar No. 354658
`
`
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`
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`Attorney for Defendant
`Collective Minds Gaming Co. Ltd.
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