`EXHIBIT 2018
`
`
`EXHIBIT 2018
`
`

`

`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 1 of 18
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`Case Nos. 11cv1810 JLS (NLS),
`12cv1633 JLS (NLS),
`12cv1634 JLS (NLS),
`12cv1640 JLS (NLS),
`12cv1644 JLS (NLS),
`12cv1646 JLS (NLS),
`12cv1648 JLS (NLS),
`12cv1649 JLS (NLS),
`12cv1651 JLS (NLS),
`12cv1652 JLS (NLS),
`12cv1653 JLS (NLS),
`12cv1654 JLS (NLS),
`and 12cv1655 JLS (NLS)
`ORDER GRANTING IN
`PART AND DENYING IN
`PART MOTIONS TO
`DISMISS
`
`AMERANTH, INC.,
`
`Plaintiff,
`
`vs.
`
`PIZZA HUT, INC.; PIZZA HUT OF
`AMERICA, INC.; DOMINO’S
`PIZZA, LLC; DOMINO’S PIZZA,
`INC.; PAPA JOHN’S USA, INC.;
`OPENTABLE, INC.; GRUBHUB,
`INC.; EXIT 41, LLC; QUICKORDER,
`INC.; SEAMLESS NORTH
`AMERICA, LLC; O-WEB
`TECHNOLOGIES LTD,
`
`Defendants.
`_______________________________
`AND RELATED CASES.
`
`Presently before the Court are twelve factually and legally similar motions to
`dismiss in twelve related patent infringement cases. Having considered the parties’
`arguments and the law, the Court GRANTS IN PART AND DENIES IN PART
`Defendants’ motions to dismiss.
`
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`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 2 of 18
`
`BACKGROUND
`
`I.
`
`Procedural History
`Defendants in twelve related patent infringement actions, all involving claims
`brought by Plaintiff Ameranth, Inc. (“Ameranth”), filed the instant motions to dismiss
`in their respective dockets on September 24, 2012.1 The twelve related actions were
`subsequently consolidated with the lead case, Ameranth v. Pizza Hut, Inc., Case No. 11-
`CV-1810 (“lead case” or “1810”), for pretrial purposes up to and including claim
`construction on October 4, 2012.2 (1810, ECF No. 279.) In each action, Ameranth has
`brought claims against Defendants for directly and/or indirectly infringing three of its
`patents: (1) United States Patent Number 6,384,850 (“the ’850 patent”); (2) United
`States Patent Number 6,871,325 (“the ’325 patent”); and (3) United States Patent
`Number 8,146,077 (“the ’077 patent”) (collectively, the “Asserted Patents”).
`Ameranth makes similar factual allegations in each case and asserts the same
`patents. The actions allegedly giving rise to the individual complaints are nearly
`identical, differing only as to the named defendant or defendants and the accused
`device. These allegations will be discussed in greater detail below, as appropriate.
`///
`///
`///
`///
`
`1Ameranth, Inc. v. Hotel Tonight, Inc., 12-CV-1633 JLS (NLS) (“1633”), ECF No. 17;
`Ameranth, Inc. v. Hotels.com, LP, 12-CV-1634 JLS (NLS) (“1634”), ECF No. 17; Ameranth, Inc. v.
`Kayak Software Corp., 12-CV-1640 JLS (NLS) (“1640”), ECF No. 17; Ameranth, Inc. v. Orbitz, LLC,
`12-CV-1644 JLS (NLS) (“1644”), ECF No. 17; Ameranth, Inc. v. StubHub, Inc., 12-CV-1646 JLS
`(NLS) (“1646”), ECF No. 17; Ameranth, Inc. v. Ticketmaster, LLC, 12-CV-1648 JLS (NLS) (“1648”),
`ECF No. 18; Ameranth, Inc. v. Travelocity.com, LP, 12-CV-1649 JLS (NLS) (“1649”), ECF No. 17;
`Ameranth, Inc. v. Fandango, Inc., 12-CV-1651 JLS (NLS) (“1651”), ECF No. 18; Ameranth, Inc. v.
`Wanderspot LLC, 12-CV-1652 JLS (NLS) (“1652”), ECF No. 17; Ameranth, Inc. v. Hotwire, Inc., 12-
`CV-1653 JLS (NLS) (“1653”), ECF No. 17; Ameranth, Inc. v. Expedia, Inc., 12-CV-1654 JLS (NLS)
`(“1654”), ECF No. 17; Ameranth, Inc. v. Micros Sys., Inc, 12-CV-1655 JLS (NLS) (“1655”), ECF No.
`17.
`
`2A total of thirty-one related cases, all involving patent infringement claims brought by
`Ameranth against various Defendants, were consolidated for pretrial purposes.
`
`- 2 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 3 of 18
`
`II.
`
`The Asserted Patents3
`As stated in the Complaint of each instant action, the Asserted Patents are
`directed to:
`[the] generation and synchronization of menus, including but not limited
`to restaurant menus, event tickets, and other products across fixed,
`wireless and/or internet platforms as well as synchronization of
`hospitality information and hospitality software applications across
`fixed, wireless and internet platforms, including but not limited to,
`computer servers, web servers, databases, affinity/social networking
`systems, desktop computers, laptops, “smart” phones and other wireless
`handheld computing devices.4
`The
`‘850 Patent — Information Management and Synchronous
`A.
`Communications System with Menu Generation
`The ‘850 Patent covers an information management and synchronous
`communications system and method for generating computerized menus for use on
`specialized displays. The invention allows for the more efficient use of handheld
`wireless devices in the restaurant and hospitality fields by creating an integrated
`solution that formats data for smaller displays and allows for synchronization of data.
`The asserted claims of the ‘850 Patent share the following elements: (1) a central
`database containing hospitality applications and data; (2) at least one wireless handheld
`computing device on which hospitality applications and data are stored; (3) at least one
`web server on which hospitality applications and data are stored; (4) at least one web
`page on which hospitality application and data are stored; (5) an application program
`interface; and (6) a communications control module. Claim 12 claims a system with the
`above elements wherein applications and data are synchronized between the central data
`base, at least one wireless handheld computing device, at least one web server, and at
`least one web page; and wherein the application program interface allows integration
`
`3This section is based on the published Patents. (See generally 1633, ECF No. 1-1; 1634, ECF
`No. 1-1; 1640, ECF No. 1-1; 1644, ECF No. 1-1; 1646, ECF No. 1-1; 1648, ECF No. 1-1; 1649, ECF
`No. 1-1; 1651, ECF No. 1-1; 1652, ECF No. 1-1; 1653, ECF No. 1-1; 1654, ECF No. 1-1; 1655, ECF
`No. 1-1.)
`
`41633, ECF No. 1 at 3; 1634, ECF No. 1 at 3; 1640, ECF No. 1 at 3; 1644, ECF No. 1 at 3;
`1646, ECF No. 1 at 3; 1648, ECF No. 1 at 3; 1649, ECF No. 1 at 3; 1651, ECF No. 1 at 3; 1652, ECF
`No. 1 at 3; 1653, ECF No. 1 at 3; 1654, ECF No. 1 at 3; 1655, ECF No. 1 at 3.
`
`- 3 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 4 of 18
`
`the
`the hospitality applications; and wherein
`of outside applications with
`communications control module interfaces between the hospitality applications and any
`other communications protocols.
`B.
`The
`‘325 Patent — Information Management and Synchronous
`Communications System with Menu Generation
`The ‘325 Patent also covers an information management and synchronous
`communications system and method for generating computerized menus for use on
`specialized displays. The asserted claims of both the ‘325 and ‘850 Patents share the
`following elements: (1) a central database containing hospitality applications and data;
`(2) at least one wireless handheld computing device on which hospitality applications
`and data are stored; (3) at least one Web server on which hospitality applications and
`data are stored; (4) at least one Web page on which hospitality application and data are
`stored; (5) an application program interface; and (6) a communications control module.
`C.
`The
`‘077 Patent — Information Management and Synchronous
`Communications System with Menu Generation, and Handwriting and Voice
`Modification of Orders
`The ‘077 Patent also covers an information management and synchronous
`communications system and method for generating computerized menus for use on
`specialized displays, but with the added ability to manually modify the entries with
`handwriting or voice. Generally, the ‘077 Patent expands upon the prior two patents
`and also covers the incorporation of a manual interface to allow consumers to manually
`input a selection.
`///
`///
`///
`///
`///
`///
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`- 4 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
`
`

`

`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 5 of 18
`
`LEGAL STANDARDS
`I. Federal Rule of Civil Procedure 12(b)(6)
`Federal Rule of Civil Procedure 12(b)(6) permits a party to raise by motion the
`defense that a complaint “fail[s] to state a claim upon which relief can be granted,”
`generally referred to as a motion to dismiss. These motions provide a basis by which
`a party may challenge the sufficiency of a claim, including counterclaims such as those
`presently at issue. In Twombly, the Court held that an adequate complaint “requires
`more than labels and conclusions, and a formulaic recitation of the elements of a cause
`of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (internal
`citation omitted). “Nor does a complaint suffice if it tenders ‘naked assertion[s]’ devoid
`of ‘further factual enhancement.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
`Twombly, 550 U.S. at 557). To accomplish this goal, a pleader must aver “factual
`content that allows the court to draw the reasonable inference that the defendant is liable
`for the misconduct alleged.” Id.
`In alleging sufficient facts to state a claim upon which relief can be granted and
`survive a motion to dismiss, Twombly and Iqbal do not require a pleader show a claim
`is probable, but there must be “more than a sheer possibility that a defendant has acted
`unlawfully.” Id. Facts “‘merely consistent with’ a defendant’s liability” fall short of
`a plausible entitlement to relief. Id. (quoting Twombly, 550 U.S. at 557). Further, the
`Court need not accept as true “legal conclusions” contained in the complaint. Id. This
`review requires context-specific analysis involving the Court’s “judicial experience and
`common sense.” Id. at 679 (citation omitted). “[W]here the well-pleaded facts do not
`permit the court to infer more than the mere possibility of misconduct, the complaint
`has alleged—but it has not ‘show[n]’—‘that the pleader is entitled to relief.’” Id.
`Where a motion to dismiss is granted, “leave to amend should be granted ‘unless
`the court determines that the allegation of other facts consistent with the challenged
`pleading could not possibly cure the deficiency.’” DeSoto v. Yellow Freight Sys., Inc.,
`957 F.2d 655, 658 (9th Cir. 1992) (quoting Schreiber Distrib. Co. v. Serv-Well
`
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`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
`
`

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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 6 of 18
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`Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986)). In other words, where leave to
`amend would be futile, the Court may deny leave to amend. See Desoto, 957 F.2d at
`658; Schreiber, 806 F.2d at 1401.
`
`ANALYSIS
`Defendants have raised substantially similar legal arguments in their
`respective motions to dismiss. Defendants move to dismiss Ameranth’s complaints
`in their entirety for failure to plausibly allege that Defendants committed direct or
`indirect infringement. Defendants further contend that Ameranth’s allegations are
`premised on indefinite and invalid patent claims. Defendants also move to dismiss
`Ameranth’s willful infringement claims for failure to plausibly allege willfulness.
`For the sake of efficiency, the Court collectively addresses the nearly identical
`arguments made by each Defendant.
`I.
`Sufficiency of the Pleadings
`A.
`Direct Infringement Claims
`Defendants contend that Ameranth cannot plausibly plead direct infringement
`because Ameranth’s theory of direct infringement requires components in the
`possession or control of third parties.5 Specifically, Defendants contend that
`Ameranth’s theory of infringement involves third party controlled web-based
`applications and wireless handheld computing devices, and that Ameranth therefore
`cannot establish Defendants’ use of all elements in the claimed systems under
`Centillion.
`In Centillion, the Federal Circuit held that, to “use” a patented system as
`required under 271(a) for purposes of direct infringement, a party must put the
`invention into service. Centillion Data Sys. LLC v. Qwest Commc’ns. Int’l, 631 F.3d
`1279, 1284 (Fed. Cir. 2011.) In other words, the direct infringer “must put the
`
`51633, ECF No. 17-1 at 14-17; 1634, ECF No. 17-1 at 13-17; 1640, ECF No. 17-1 at 14-17;
`1644, ECF No. 17-1 at 13-17; 1646, ECF No. 17-1 at 13-17; 1648, ECF No. 18-1 at 14-17; 1649, ECF
`No. 17 at 13-17; 1651, ECF No. 18-1 at 13-17; 1652, ECF No. 17-1 at 14-17; 1653, ECF No. 17-1 at
`13-17; 1654, ECF No. 17-1 at 13-17; 1655, ECF No. 17-1 at 13-16.
`
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`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 7 of 18
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`invention into service, i.e., control the system as a whole and obtain benefit from it.”
`Id. (citing NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir.
`2005)). The accused system in Centillion incorporated a “front-end” system
`maintained by consumers on their personal computers that would allow the
`consumers to access data processed by a “back-end” system maintained by the
`service provider. Centillion Data Sys., 631 F.3d 1279 at 1281. The patent-in-suit
`included an element requiring “personal computer data processing means adapted to
`perform additional processing.” Id. The Federal Circuit held that the consumers,
`rather than the service provider, were the “users” of the patented invention because
`they invoked the back end processing services and also performed the additional
`front end processing on an adopted device. Id. at 1285. In contrast, the service
`provider did not use the system because it only provided the software for customers
`to install and never put into service the personal computer data processing means.
`Id. at 1286.
`Here, Ameranth contends that it has sufficiently plead that Defendants use the
`claimed invention by placing the system as a whole into service by generating menus
`to wireless handheld computing devices and synchronizing data and applications
`with such devices.6 The Court agrees with this argument, and notes that “a user does
`not necessarily need to ‘have physical control over’ all elements of a system in order
`to ‘use’ a system.” Technology Patents LLC v. T-Mobile (UK) Ltd., 700 F.3d 482,
`501 (Fed. Cir. 2012) (citing Centillion, 631 F.3d at 1284). The fact that the wireless
`handheld computing devices at issue here may be used and provided by Defendants’
`customers rather than by Defendants themselves is not sufficient to preclude “use”
`of the accused system as a whole by Defendants. Accordingly, the Court DENIES
`Defendants’ motion on this basis. At this stage of litigation, further factual
`
`61633 ECF No. 22 at 11; 1634 ECF No. 22 at 11; 1640 ECF No. 22 at 11; 1644 ECF No. 22
`at 11; 1646 ECF No. 22 at 11; 1648 ECF No. 24 at 11; 1649 ECF No. 22 at 11; 1651 ECF No. 23 at
`11; 1652 ECF No. 22 at 11; 1653 ECF No. 22 at 11; 1654 ECF No. 22 at 11; 1655 ECF No. 22 at 11.
`
`- 7 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 8 of 18
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`discovery is required to determine the scope and use of the accused system to
`determine whether Defendants’ customers, rather than Defendants themselves,
`“control the system as a whole and obtain benefit from it.”
`Further, the Court notes that Ameranth has sufficiently pleaded its direct
`infringement claims by satisfying the specificity requirements of Form 18 in the
`Appendix of Forms to the Federal Rules of Civil Procedure.7 Form 18 requires that
`a complaint for direct infringement contain: (1) an allegation of jurisdiction; (2) a
`statement that the plaintiff owns the patent; (3) a statement that the defendant has
`been infringing the patent by making, selling, and using the device embodying the
`patent; (4) a statement that the plaintiff has given the defendant notice of its
`infringement; and (5) a demand for an injunction and damages. McZeal v. Sprint
`Nextel Corp., 501 F.3d 1354, 1356-57 (Fed. Cir. 2007).
`The Federal Circuit has recently addressed the plausibility requirements for
`complaints that allege patent infringement. In re Bill of Lading Transmission &
`Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012). Considering Form
`18, the court held that “whether [a plaintiff’s] complaints adequately plead direct
`infringement is to be measured by the specificity required by Form 18,” rather than
`the more stringent standards of Twombly and Iqbal. Id. at 1334. The court further
`addressed the issue in K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., stating
`that “to the extent any conflict exists between Twombly (and its progeny) and the
`Forms regarding pleadings requirements, the Forms control.” 714 F.3d 1277, 1283
`(Fed. Cir. 2013).
`Here, Ameranth’s complaints satisfy Form 18. As discussed above, each
`complaint contains an allegation of jurisdiction and ownership of the Asserted
`
`71633 ECF No. 22 at 7; 1634 ECF No. 22 at 7; 1640 ECF No. 22 at 7; 1644 ECF No. 22 at 7;
`1646 ECF No. 22 at 7; 1648 ECF No. 24 at 7; 1649 ECF No. 22 at 7; 1651 ECF No. 23 at 7; 1652
`ECF No. 22 at 7; 1653 ECF No. 22 at 7; 1654 ECF No. 22 at 7; 1655 ECF No. 22 at 7.
`
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`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 9 of 18
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`Patents.8 Further, each complaint contains an allegation that the named defendant or
`defendants in that case have directly infringed the Asserted Patents and had notice of
`the infringement.9 Finally, each complaint contains a demand for an injunction and
`damages.10 Ameranth has sufficiently alleged that Defendants’ systems must and do
`generate and synchronize menus using Ameranth’s patented systems. Accordingly,
`the Court finds that Ameranth’s complaints contain sufficient information to satisfy
`Form 18, and that Ameranth’s direct infringement claims therefore survive
`Defendants’ motions to dismiss.
`B.
`Vicarious Liability
`Defendants contend that Ameranth has failed to plead facts sufficient to allege
`vicarious liability for any direct infringement by others.11 As Ameranth agrees that
`the complaints do not rely on allegations of vicarious liability to establish direct
`infringement, it is unnecessary for the Court to address this issue.12
`
`81633, ECF No. 1 ¶¶ 3-7, 16, 31, 45; 1634, ECF No. 1 ¶¶ 3-7, 16, 31, 45; 1640, ECF No. 1 ¶¶
`3-7, 16, 31, 45; 1644, ECF No. 1 ¶¶ 3-7, 16, 31, 45; 1646, ECF No. 1 ¶¶ 3-7, 16, 31, 45; 1648, ECF
`No. 1 ¶¶ 3-7, 16, 31, 45; 1649, ECF No. 1 ¶¶ 3-7, 16, 31, 45; 1651, ECF No. 1 ¶¶ 3-7, 16, 31, 45;
`1652, ECF No. 1 ¶¶ 3-7, 16, 31, 45; 1653, ECF No. 1 ¶¶ 3-7, 16, 31, 45; 1654, ECF No. 1 ¶¶ 3-7, 16,
`31, 45; 1655, ECF No. 1 ¶¶ 3-7, 16, 31, 45.
`
`91633, ECF No. 1 ¶¶ 17-27, 32-41, 46-55; 1634, ECF No. 1 ¶¶ 17-27, 32-41, 46-55; 1640, ECF
`No. 1 ¶¶ 17-27, 32-41, 46-55; 1644, ECF No. 1 ¶¶ 17-27, 32-41, 46-55; 1646, ECF No. 1 ¶¶ 17-27,
`32-41, 46-55; 1648, ECF No. 1 ¶¶ 17-27, 32-41, 46-55; 1649, ECF No. 1 ¶¶ 17-27, 32-41, 46-55;
`1651, ECF No. 1 ¶¶ 17-27, 32-41, 46-55; 1652, ECF No. 1 ¶¶ 17-27, 32-41, 46-55; 1653, ECF No.
`1 ¶¶ 17-27, 32-41, 46-55; 1654, ECF No. 1 ¶¶ 17-27, 32-41, 46-55; 1655, ECF No. 1 ¶¶ 17-27, 32-41,
`46-55.
`
`101633, ECF No. 1 at 14-15; 1634, ECF No. 1 at 14-15; 1640, ECF No. 1 at 14; 1644, ECF No.
`1 at 14; 1646, ECF No. 1 at 14; 1648, ECF No. 1 at 14-15; 1649, ECF No. 1 at 14-15; 1651, ECF No.
`1 at 14; 1652, ECF No. 1 at 14-15; 1653, ECF No. 1 at 14; 1654, ECF No. 1 at 14; 1655, ECF No. 1
`at 14.
`
`111633, ECF No. 17-1 at 17-18; 1634, ECF No. 17-1 at 17-18; 1640, ECF No. 17-1 at 17-18;
`1644, ECF No. 17-1 at 17-18; 1646, ECF No. 17-1 at 17-18; 1648, ECF No. 18-1 at 17-19; 1649, ECF
`No. 17-1 at 17-18; 1651, ECF No. 18-1 at 17-18; 1652, ECF No. 17-1 at 17-18; 1653, ECF No. 17-1
`at 17-18; 1654, ECF No. 17-1 at 17-18; 1655, ECF No. 17-1 at 16-18.
`
`121633, ECF No. 22 at 16; 1634, ECF No. 22 at 16; 1640, ECF No. 22 at 16; 1644, ECF No.
`22 at 16; 1646, ECF No. 22 at 16; 1648, ECF No. 24 at 16; 1649, ECF No. 22 at 16; 1651, ECF No.
`23 at 16; 1652, ECF No. 22 at 16; 1653, ECF No. 22 at 16; 1654, ECF No. 22 at 16; 1655, ECF No.
`22 at 16.
`
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`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 10 of 18
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`C.
`
`Indirect Infringement Claims
`i.
`Underlying Act of Direct Infringement
`Defendants move to dismiss Ameranth’s indirect infringement claims for
`failure to plausibly allege that there has been direct infringement by any third party.
`Specifically, Defendants contend that the complaints lack the facts necessary to
`plausibly suggest that Defendants’ customers use a system that includes all elements
`of the claimed system.13
`“Indirect infringement, whether inducement to infringe or contributory
`infringement, can only arise in the presence of direct infringement . . . .” Joy Techs.,
`Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993). Accordingly, Ameranth’s
`complaints must plausibly allege that the Asserted Patents were directly infringed to
`survive Defendants’ motions to dismiss. However, “a plaintiff need not identify a
`specific direct infringer if it pleads facts sufficient to allow an inference that at least
`one direct infringer exists.” In re Bill of Lading, 681 F.3d at 1339.
`Ameranth, relying heavily on In re Bill of Lading, contends that it has alleged
`sufficient facts to support an inference that consumers and hotel/restaurant operators
`using the accused systems are direct infringers.14 In support of its argument,
`Ameranth points to the following allegations in its complaints:
`
`[The accused system], as deployed and/or used at or from one or more
`locations by [named Defendant or Defendants], its agents, distributors,
`partners, affiliates, licensees, and/or their customers, infringes one or
`
`131633, ECF No. 17-1 at 19; 1634, ECF No. 17-1 at 19; 1640, ECF No. 17-1 at 19; 1644, ECF
`No. 17-1 at 19; 1646, ECF No. 17-1 at 19; 1648, ECF No. 18-1 at 19; 1649, ECF No. 17-1 at 19; 1651,
`ECF No. 18-1 at 19; 1652, ECF No. 17-1 at 19; 1653, ECF No. 17-1 at 19; 1654, ECF No. 17-1 at 19;
`1655, ECF No. 17-1 at 18.
`
`141633, ECF No. 22 at 18; 1634, ECF No. 22 at 18; 1640, ECF No. 22 at 18; 1644, ECF No.
`22 at 18; 1646, ECF No. 22 at 18; 1648, ECF No. 24 at 18; 1649, ECF No. 22 at 18; 1651, ECF No.
`23 at 18; 1652, ECF No. 22 at 18; 1653, ECF No. 22 at 18; 1654, ECF No. 22 at 18; 1655, ECF No.
`22 at 18.
`
`- 10 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 11 of 18
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`more valid and enforceable claims of the ’850 patent . . . .15
`[The accused system], as deployed and/or used at or from one or more
`locations by [named Defendant or Defendants], its agents, distributors,
`partners, affiliates, licensees, and/or their customers, infringes one or
`more valid and enforceable claims of the ’325 patent . . . .16
`[C]ustomers of [named Defendant or Defendants], including
`consumers and hotel/restaurant operators, use the [accused system] in
`a manner that infringes upon one or more valid and enforceable claims
`of the ’325 patent.17
`[Named Defendant or Defendants] actively induces others to infringe
`the ’325 patent in violation of 35 U.S.C. § 271(b) by knowingly
`encouraging, aiding and abetting customers of [named Defendant or
`Defendants], including consumers and hotel/restaurant operators, to
`use the infringing [accused system] in the United States without
`authority or license from Ameranth.18
`[The accused system], as deployed and/or used at or from one or more
`locations by [named Defendant or Defendants], its agents, distributors,
`partners, affiliates, licensees, and/or their customers, infringes one or
`more valid and enforceable claims of the ’077 patent . . .19
`
`[C]ustomers of [named Defendant or Defendants], including
`consumers and hotel/restaurant operators, use the [accused system] in
`a manner that infringes upon one or more valid and enforceable claims
`of the ’077 patent.20
`
`151633, ECF No. 1 ¶ 18; 1634, ECF No. 1 ¶ 18; 1640, ECF No. 1 ¶ 18; 1644, ECF No. 1 ¶ 18;
`1646, ECF No. 1 ¶ 18; 1648, ECF No. 1 ¶ 18; 1649, ECF No. 1 ¶ 18; 1651, ECF No. 1 ¶ 18; 1652,
`ECF No. 1 ¶ 18; 1653, ECF No. 1 ¶ 18; 1654, ECF No. 1 ¶ 18; 1655, ECF No. 1 ¶ 18.
`
`161633, ECF No. 1 ¶ 33; 1634, ECF No. 1 ¶ 33; 1640, ECF No. 1 ¶ 33; 1644, ECF No. 1 ¶ 33;
`1646, ECF No. 1 ¶ 33; 1648, ECF No. 1 ¶ 33; 1649, ECF No. 1 ¶ 33; 1651, ECF No. 1 ¶ 33; 1652,
`ECF No. 1 ¶ 33; 1653, ECF No. 1 ¶ 33; 1654, ECF No. 1 ¶ 33; 1655, ECF No. 1 ¶ 33.
`
`171633, ECF No. 1 ¶ 35; 1634, ECF No. 1 ¶ 35; 1640, ECF No. 1 ¶ 35; 1644, ECF No. 1 ¶ 35;
`1646, ECF No. 1 ¶ 35; 1648, ECF No. 1 ¶ 35; 1649, ECF No. 1 ¶ 35; 1651, ECF No. 1 ¶ 35; 1652,
`ECF No. 1 ¶ 35; 1653, ECF No. 1 ¶ 35; 1654, ECF No. 1 ¶ 35; 1655, ECF No. 1 ¶ 35.
`
`181633, ECF No. 1 ¶ 36; 1634, ECF No. 1 ¶ 36; 1640, ECF No. 1 ¶ 36; 1644, ECF No. 1 ¶ 36;
`1646, ECF No. 1 ¶ 36; 1648, ECF No. 1 ¶ 36; 1649, ECF No. 1 ¶ 36; 1651, ECF No. 1 ¶ 36; 1652,
`ECF No. 1 ¶ 36; 1653, ECF No. 1 ¶ 36; 1654, ECF No. 1 ¶ 36; 1655, ECF No. 1 ¶ 36.
`
`191633, ECF No. 1 ¶ 47; 1634, ECF No. 1 ¶ 47; 1640, ECF No. 1 ¶ 47; 1644, ECF No. 1 ¶ 47;
`1646, ECF No. 1 ¶ 47; 1648, ECF No. 1 ¶ 47; 1649, ECF No. 1 ¶ 47; 1651, ECF No. 1 ¶ 47; 1652,
`ECF No. 1 ¶ 47; 1653, ECF No. 1 ¶ 47; 1654, ECF No. 1 ¶ 47; 1655, ECF No. 1 ¶ 47.
`
`201633, ECF No. 1 ¶ 49; 1634, ECF No. 1 ¶ 49; 1640, ECF No. 1 ¶ 49; 1644, ECF No. 1 ¶ 49;
`1646, ECF No. 1 ¶ 49; 1648, ECF No. 1 ¶ 49; 1649, ECF No. 1 ¶ 49; 1651, ECF No. 1 ¶ 49; 1652,
`ECF No. 1 ¶ 49; 1653, ECF No. 1 ¶ 49; 1654, ECF No. 1 ¶ 49; 1655, ECF No. 1 ¶ 49.
`
`- 11 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 12 of 18
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`[Named Defendant or Defendants] actively induces others to infringe
`the ’077 patent in violation of 35 U.S.C. § 271(b) by knowingly
`encouraging, aiding and abetting customers of [named Defendant or
`Defendants], including consumers and hotel/restaurant operators, to
`use the infringing [accused system] in the United States without
`authority or license from Ameranth.21
`
`Considered as a whole, the Court finds that Ameranth’s allegations are
`sufficient to allow an inference that at least one direct infringer exists. Here,
`Ameranth generically identifies direct infringers as “consumers and hotel/restaurant
`operators” and “customers.” At the pleading stage, this is sufficient to identify a
`third party direct infringer to maintain Ameranth’s indirect infringement claims.
`ii.
`Knowledge of the Patents
`Defendants further contend that Ameranth’s indirect infringement claims must
`fail because Ameranth has failed to sufficiently plead that Defendants had
`knowledge of the Asserted Patents. For an inducement of infringement claim, “the
`patentee must show . . . that the alleged infringer knowingly induced infringement
`and possessed specific intent to encourage another’s infringement.” Kyocera
`Wireless Corp. v. ITC, 545 F.3d 1340, 1353-54 (Fed. Cir. 2008) (internal citations
`and quotations omitted). “[T]he specific intent necessary to induce infringement
`requires more than just intent to cause the acts that produce direct infringement.
`Beyond that threshold knowledge, the inducer must have an affirmative intent to
`cause direct infringement.” Id. at 1354 (internal citations and quotations omitted).
`Similarly, for a contributory infringement claim, the patentee must show that the
`alleged infringer knows that the component is “especially made or especially
`adapted for use in an infringement of [the] patent.” 35 U.S.C. § 271(c); see also i4i
`Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 850-51 (Fed. Cir. 2010).
`Here, Ameranth contends that it has sufficiently pleaded Defendants’
`
`211633, ECF No. 1 ¶ 50; 1634, ECF No. 1 ¶ 50; 1640, ECF No. 1 ¶ 50; 1644, ECF No. 1 ¶ 50;
`1646, ECF No. 1 ¶ 50; 1648, ECF No. 1 ¶ 50; 1649, ECF No. 1 ¶ 50; 1651, ECF No. 1 ¶ 50; 1652,
`ECF No. 1 ¶ 50; 1653, ECF No. 1 ¶ 50; 1654, ECF No. 1 ¶ 50; 1655, ECF No. 1 ¶ 50.
`
`- 12 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 13 of 18
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`knowledge of the Asserted Patents by pleading the wide-spread awareness of
`Ameranth’s technology in the hospitality sector.22 However, as noted by
`Defendants, the majority of Ameranth’s allegations relate only to public knowledge
`of Ameranth and its technology, and say nothing about whether Defendants knew of
`Ameranth and the Asserted Patents. The only allegation as to Defendants’
`knowledge of the Asserted Patents in Ameranth’s complaint is the statement that
`“[Named Defendant or Defendants] has had knowledge of [the Asserted Patents].”23
`The Court finds that Ameranth has failed to allege facts plausibly establishing
`that Defendants had knowledge of the Asserted Patents. A conclusory allegation
`that Defendants had actual knowledge of the patents at issue is insufficient to set out
`a plausible claim for indirect infringement. Although Ameranth cites to the factors
`used by the court in Trading Technologies International, Inc. v. BCG Partners, Inc.,
`the complaint in that case included an allegation that the patentee had marked its
`product with the asserted patent’s number. No. 10-cv-715, 2011 WL 3946581, at
`*3-4 (N.D. Ill. Sept. 2, 2011). That court was thus able to infer that the defendants,
`as competitors with the patentee, would be aware of any patents issued to the
`patentee. Such a finding does not apply here, and the Court is unconvinced that
`allegations of some public knowledge of Ameranth’s patents are sufficient to support
`an inference that Defendants also had knowledge of the Asserted Patents.
`Further, to the extent that Ameranth contends that Defendants had knowledge
`of the Asserted Patents as of the filing of the complaints, such allegations are
`insufficient to support Ameranth’s indirect infringement claims unless Ameranth
`
`221633, ECF No. 22 at 20; 1634, ECF No. 22 at 20; 1640, ECF No. 22 at 20; 1644, ECF No.
`22 at 20; 1646, ECF No. 22 at 20; 1648, ECF No. 24 at 20; 1649, ECF No. 22 at 20; 1651, ECF No.
`23 at 20; 1652, ECF No. 22 at 20; 1653, ECF No. 22 at 20; 1654, ECF No. 22 at 20; 1655, ECF No.
`22 at 20.
`
`231633, ECF No. 1 ¶¶ 22, 40, 54; 1634, ECF No. 1 ¶¶ 22, 40, 54; 1640, ECF No. 1 ¶¶ 22, 40,
`54; 1644, ECF No. 1 ¶¶ 22, 40, 54; 1646, ECF No. 1 ¶¶ 22, 40, 54; 1648, ECF No. 1 ¶¶ 22, 40, 54;
`1649, ECF No. 1 ¶¶ 22, 40, 54; 1651, ECF No. 1 ¶¶ 22, 40, 54; 1652, ECF No. 1 ¶¶ 22, 40, 54; 1653,
`ECF No. 1 ¶¶ 22, 40, 54; 1654, ECF No. 1 ¶¶ 22, 40, 54; 1655, ECF No. 1 ¶¶ 22, 40, 54.
`
`- 13 -
`11cv1810; 12cv1633; 12cv1634; 12cv1640; 12cv1644; 12cv1646; 12cv1648; 12cv1649; 12cv1651; 12cv1652; 12cv1653; 12cv1654; 12cv1655
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`Case 3:12-cv-01633-JLS-NLS Document 27 Filed 07/05/13 Page 14 of 18
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`limits its claims to post-litigation conduct. Otherwise, Defendants could be held
`liable for acts inducing infringement or contributing to infringement