IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`ROSETTA-WIRELESS CORP., an
`illinois corporation,
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`Plaintiff,
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`v.
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`APPLE INC., a
`California Corporation, eta!.,
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`Defendants.
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`Case No. 15 C 799
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`Judge Joan H. Lefkow
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`OPINION AND ORDER
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`On June 1, 2015, Rosetta-Wireless Corp. ("Rosetta"), the holder ofU.S. Patent No.
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`7,149,511 ("the '511 patent"), filed an amended complaint for direct patent infringement against
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`Apple Inc. ("Apple"); Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc.
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`(collectively, "Samsung"); Motorola Mobility LLC ("Motorola"); LG Electronics Co. and LG
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`Electronics USA Inc. (collectively, "LG"); and HTC Corporation and HTC America Inc.
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`(collectively, "HTC"). (Dkt. 82 ("Am. Campi.").) Rosetta alleges that defendants "infringed
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`direct! y and continue to infringe direct! y" the '511 patent by manufacturing, using, selling, or
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`offering for sale within the United States, or by importing into the United States, products that
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`embody the patented invention. (/d ~ 15.) Defendants have moved to dismiss for failure to state
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`a claim, or, in the alternative, for a more definite statement ( dkt. 88) and to sever the proceedings
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`(dkt. 92), while HTC has separately moved to dismiss the claims against it for improper venue.
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`(Dkt. 95.) For the reasons stated below, the motions are granted in part and denied in part. 1
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`1 The court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a). The parties do not dispute that
`venue is proper in this district with respect to the non-HTC defendants under 28 U.S.C. §§ 139l(c)(3) and
`1400(b). As discussed infra, HTC's motion to dismiss for improper venue will be denied as moot given
`its dismissal without prejudice from this case.
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`LG Electronics, Inc. et al.
`EXHIBIT 1017
`IPR Petition for
`U.S. Patent No. 7.149.511
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`

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`I.
`
`The Parties
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`BACKGROUND2
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`Rosetta is an Illinois corporation engaged in the business of developing and marketing
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`novel solutions to consumers’ wireless Internet access problems. (Am. Compl. 1 1.) Rosetta is
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`the holder of the eighty-claim ’511 patent, entitled, "Wireless Intelligent Personal Server," which
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`"receives data transmitted over a wireless communications channel and automatically processes
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`it so as to maintain a copy of at least one electronic file stored in a source computer." (Id. 1 14;
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`dkt. 1-1 at 7.) Defendants are foreign and domestic corporations whose business activities
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`include, among other things, marketing, selling, and offering for sale cellular telephone devices
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`in the United States. (Am. Compl. 11 2-12.) Of particular relevance to the present motions is
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`the citizenship of the HTC entities: HTC Corporation is a foreign corporation with its corporate
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`headquarters in Taiwan. (Id. 1 10.) HTC America Inc. is a Washington corporation with its
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`principal place of business in Washington. (Id. 1 11.)
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`II.
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`Factual and Procedural History
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`On January 27, 2015, Rosetta filed suit for direct and indirect patent infringement against
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`ten entities affiliated with Apple, Samsung, Motorola, LG, or HTC. (Dkt. 1.) According to the
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`original complaint, defendants had "infringed directly and indirectly" the ’ 511 patent by
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`manufacturing, using, selling, or offering for sale within the United Sates, or by importing into
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`the United States, products that embodied the patented invention. (Id. 1 18.) Rosetta attached a
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`copy of the patent to its original complaint (see dkt. 1-1) and also appended a list of
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`approximately 300 products (specifically, smartphones and tablets) that allegedly infringed the
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`2 Given the brevity of the amended complaint, the court has culled this background from the
`original and amended complaints, as well as the docket. The facts taken from the amended complaint are
`presumed true for the purpose of resolving the pending motions. See Active Disposal, Inc. v. City of
`Darien, 635 F.3d 883, 886 (7th Cir. 2011) (motion to dismiss for failure to state a claim); Faulkenberg v.
`CB Tax Franchise Sys., LP, 637 F.3d 801,806 (7th Cir. 2011) (motion to dismiss for improper venue).
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`2
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`Page 2 of 10
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`’511 patent, complete with retail names, model numbers, and release dates (if known). (See dkt.
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`1-2.) The list included, for example, various models &Apple’s iPhone. (See id.)
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`After voluntarily dismissing two defendants (see dkts. 9, 37), Rosetta filed an amended
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`complaint on June 1, 2015. (See Am. Compl.) In the amended complaint, Rosetta states that the
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`court has subject-matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)and that "[v]enue is
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`proper in this federal district pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b) in that each
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`Defendant has done business [and]... committed acts of infringement in this District." (Id.
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`¶ 13.) Rosetta also alleges ownership over the patent in suit and asserts that defendants
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`have infringed directly and continue to infringe directly the ’511
`Patent. The infringing acts include, but are not limited to, the
`manufacture, use, sale, or offer for sale within the United States, or
`the importation into the United States of products that embody the
`patented invention, including the products listed for each
`Defendant in the attached Exhibit B.3
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`(Id. ¶¶ 14-15.) As a remedy, Rosetta requests damages and injunctive relief. (Id. ¶ 16.)
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`Defendants have filed three motions directed at the amended complaint: (1) defendants’
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`motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6) or,
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`in the alternative, for a more definite statement under Rule 12(e) (dkt. 88); (2) defendants’
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`motion to sever the proceedings under 35 U.S.C. § 299 and Rule 21 (dkt. 92); and (3) HTC’s
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`motion to dismiss the claims against it for improper venue under Rule 12(b)(3). (Dkt. 95.)
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`Because defendants’ motion to sever is dispositive with respect to the non-Apple defendants, the
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`court addresses it first before turning to defendants’ motion to dismiss and HTC’s motion to
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`dismiss for improper venue.
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`3 Although Rosetta did not attach a copy of the ’511 patent or the list of allegedly infringing
`products to its amended complaint, the parties do not dispute that these documents are considered part of
`Rosetta’s amended pleading as they are concededly authentic, referenced in the amended complaint, and
`central to Rosetta’s claims. (See Am. Compl. ¶¶ 14-15); Adams v. City of Indianapolis, 742 F.3d 720,
`729 (7th Cir. 2014).
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`Page 3 of 10
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`I.
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`Defendants’ Motion to Sever
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`ANALYSIS
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`Defendants move to sever the proceedings into five separate suits on the ground that
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`defendants were impermissibly joined. Although Federal Rule of Civil Procedure 20 typically
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`governs j oinder in federal court, 35 U.S.C. § 299, enacted as part of the Leahy-Smith America
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`Invents Act ("the AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011), details when joinder of
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`accused patent infringers is proper:
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`(a)... [P]arties that are accused infringers may be joined in one
`action as defendants or counterclaim defendants, or have their
`actions consolidated for trial, only if-
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`(l) any right to relief is asserted against the parties
`jointly, severally, or in the alternative with respect
`to or arising out of the same transaction, occurrence,
`or series of transactions or occurrences relating to
`the making, using, importing into the United States,
`offering for sale, or selling of the same accused
`product or process; and
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`(2) questions of fact common to all defendants or
`counterclaim defendants will arise in the action.
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`35 U.S.C. § 299(a). Additionally, § 299(b) provides that "accused infringers may not be j oined
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`in one action as defendants or counterclaim defendants, or have their actions consolidated for
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`trial, based solely on allegations that they each have infringed the patent or patents in suit." Id.
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`§ 299(b). "The AIA’s j oinder provision is more stringent than Rule 20, and adds a requirement
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`that the transaction or occurrence must relate to making, using, or selling of the same accused
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`product or process." In re Nintendo Co., Ltd., 544 Fed. App’x 934, 939 (Fed. Cir. 2013). If
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`joinder is improper, a court may sever the proceedings under Rule 21. See Fed. R. Civ. P. 21.
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`Here, Rosetta does not argue that all defendants are j ointly and severally liable for
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`infringing the ’511 patent, or that any right to relief arises out of the same transaction or
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`Page 4 of 10
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`occurrence. Indeed, it would be difficult to do so, as even under the more-lenient standard of
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`Rule 20, courts in this district and others have repeatedly "concluded that a party fails to satisfy
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`[the] requirement of a common transaction or occurrence where unrelated defendants, based on
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`different acts, are alleged to have infringed the same patent." Rudd v. Lux Prods. Corp. Emerson
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`Climate Techs. Braeburn Sys., LLC, No. 09 C 6957, 2011 WL 148052, at *3 (N.D. Ill. Jan 12,
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`2011) (collecting cases). Rather, Rosetta states that it does not oppose defendants’ motion and
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`merely requests that, should the court sever the actions, "the five defendant groups.., maintain
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`consolidated pretrial proceedings, including a common schedule, coordinated discovery,
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`consolidated depositions, and consolidated Markman proceedings." (Dkt. 100 at 1-2.)
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`Because Rosetta does not oppose severance, the court will exercise its discretion under
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`Rule 21 to sever the claims against the five defendant groups (Apple, Samsung, Motorola, LG,
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`and HTC). With respect to Rosetta’s accompanying request for consolidation, the court notes
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`that such a request is inappropriate at this time, as all defendants but Apple will be dismissed
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`without prejudice so that Rosetta can file separate suits against each defendant group. With that
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`said, the court notes that consolidation in the future may serve the interest of judicial economy
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`and allow the cases to be efficiently resolved. See Fed. R. Civ. P. 42(a).
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`II.
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`Defendants’ Motion to Dismiss for Failure to State a Claim
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`Defendants also move to dismiss for failure to state a claim, or, in the alternative, for a
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`more definite statement. Because the non-Apple defendants will be dismissed without prejudice
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`pursuant to the court’s ruling on defendants’ motion to sever, the court addresses this motion
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`with respect to Apple only.
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`Claims for direct infringement are governed by 35 U.S.C. § 271(a), which provides that
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`"whoever without authority makes, uses, offers to sell, or sells any patented invention, within the
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`Page 5 of 10
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`United States or imports into the United States any patented invention during the term of the
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`patent therefor, infringes the patent." The parties’ first dispute is what legal standard should
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`determine the sufficiency of the amended complaint. Defendants argue that Seventh Circuit law,
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`and in particular, the Supreme Court’s interpretation of Federal Rule of Civil Procedure 8
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`governs, while Rosetta contends that Form 18 of the Federal Rules of Civil Procedure supplies
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`the controlling standard. Rosetta is correct. The amended complaint need only comply with
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`Form 18.
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`Because a Rule 12(b)(6) motion for failure to state a claim "is a purely procedural
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`question not pertaining to patent law," the court applies Seventh Circuit precedent
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`notwithstanding the patent-based nature of the suit. See McZeal v. Spring Nextel Corp., 5 01 F.3 d
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`1354, 1356 (Fed. Cir. 2007); see also In Re Bill of Lading Transmission & Processing Sys.
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`PatentLitig., 681 F.3d 1323, 1331 (Fed. Cir. 2012). In this circuit, as in all others, a motion to
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`dismiss under Rule 12(b)(6) challenges a complaint for failure to state a claim on which relief
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`may be granted. Fed. R. Civ. P. 12(b)(6). To survive a Rule 12(b)(6) motion, the complaint
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`must not only provide the defendant with fair notice of a claim’s basis but must also establish
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`that the requested relief is plausible on its face. See Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.
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`Ct. 1937, 173 L. Ed. 2d 868 (2009); BellAtl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct.
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`1955, 167 L. Ed. 2d 929 (2007); Bissessur v. Ind. Bd. of Trs., 581 F.3d 599, 602 (7th Cir. 2009).
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`The allegations in the complaint must be "enough to raise a fight to relief above the speculative
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`level." Twombly, 550 U.S. at 555; Bissessur, 581 F.3d at 602.
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`Although Seventh Circuit law applies, the Federal Rules of Civil Procedure provide a
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`series of forms that "suffice under the[] rules and illustrate the simplicity and brevity that the[]
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`rules contemplate." Fed. R. Civ. P. 84. Form 18 in the Appendix of Forms sets forth the
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`following elements of a claim for direct patent infringement, which a plaintiff must plead to
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`survive dismissal: "(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the
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`patent; (3) a statement that defendant has been infringing the patent ’by making, selling, and
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`using [the device] embodying the patent’; (4) a statement that the plaintiff has given the
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`defendant notice of its infringement; and (5) a demand for an injunction and damages." McZeal,
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`501 F.3d at 1357 (alteration in original) (quoting current Fed. R. Civ. P. Form 18). A pleading
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`that properly adheres to the specificity of Form 18 "cannot be successfully attacked," In re Bill of
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`Lading, 681 F.3d at 1334 (quoting 12 Charles Alan Wright, Arthur R. Miller & Richard L.
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`Marcus, Federal Practice and Procedure § 3162 (2d ed. 1997)), and this is true regardless of the
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`law of the applicable regional circuit. See K-Tech Telecomm., Inc. v. Time Warner Cable, Inc.,
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`714 F.3d 1277, 1283 n. 1 (Fed. Cir. 2013). Indeed, "[a]ny changes to the Federal Rules of Civil
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`Procedure ’must be obtained by the process of amending the Federal Rules, and not by judicial
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`interpretation." Id. at 1283 (quoting Leatherman v. Tarrant Cnty. Narcotics Intelligence &
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`Coordination Unit, 507 U.S. 163, 168, 113 S. Ct. 1160, 122 L. Ed. 2d 517 (1993)). "[T]o the
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`extent any conflict exists between Twombly (and its progeny) and the Forms regarding pleading
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`requirements, the Forms control.’’4 Id. (citation omitted).
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`Defendants argue that even if Form 18 controls, Rosetta’s amended complaint still fails to
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`state a claim on which relief can be granted. The parties do not dispute that Rosetta has pleaded
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`elements 1, 2, and 5 of Form 18, but disagree as to whether prongs 3 and 4 are satisfied. Element
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`4 can be dealt with swiftly, as defendants’ only argument on this point is that Rosetta has failed
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`to plead that it gave notice to defendants of the alleged infringement before filing suit. Contrary
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`4 Although Rule 84 has been abrogated, and with it, the Appendix of Forms, that change does not
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`go into effect until December 1, 2015. See Fed. R. Civ. P. 84 ("[Text of Rule 84 abrogated effective
`December 1, 2015, absent contrary Congressional action.]"). As such, the court looks to Form 18 for
`purposes of this suit and declines to hold Rosetta to a different pleading standard at this juncture.
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`to defendants’ contention, Form 18 does not require pre-suit notice of infringement, as the filing
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`of a complaint constitutes sufficient notice. See 35 U.S.C. § 287(a) ("Filing of an action for
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`infringement shall constitute such notice."); Addiction & Detoxification Inst. L.L.C. v.
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`Carpenter, --- Fed. App’x ---, 2015 WL 4430128, at *2 (Fed. Cir. July 21, 2015) ("Pre-filing
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`notice, however, is not required to bring a suit for direct infringement." (citing 35 U.S.C. § 287)).
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`Accordingly, defendants’ argument does not counsel in favor of dismissal.
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`Nor is the court persuaded that the amended complaint fails to comply with element 3.
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`That paragraph of Form 18 requires, by way of example, a statement that "It]he defendant has
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`infringed and is still infringing the Letters Patent by making, selling, and using electric motors
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`that embody the patented invention." Fed. R. Civ. P. Form 18 (emphasis omitted). Rosetta
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`satisfies this standard by alleging that defendants "have infringed directly and continue to
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`infringe directly the ’ 511 Patent" by manufacturing, using, selling, or offering for sale within the
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`United States, or by importing into the United States, products that embody the patented
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`invention. (Am. Compl. ¶ 15.) Rosetta also lists approximately 300 of defendants’ smartphones
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`and tablets in Exhibit B as examples of products that embody the patented invention, and for
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`each product, Rosetta provides the retail name and model number, as well as the release date (if
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`known). (See dkt. 1-1.) These allegations satisfy Form 18 because they notify defendants "what
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`is being accused of infringement"--specific smartphones and tablets--and therefore
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`"allow[]... defendant[s] to understand the nature of the suit and prepare an answer." Addiction
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`& Detoxification Inst. L.L.C., 2015 WL 4430128, at *3; see also In re Bill of Lading, 681 F.3d at
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`1336 (noting that "as long as the complaint.., meet[s] the requirements of Form 18, the
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`complaint has sufficiently pled direct infringement").
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`Defendants argue that the asserted patent and accused products in this case are
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`Page 8 of 10
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`significantly more complex than the electric motor example described in Form 18 and that
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`therefore, Rosetta must provide more detail to state a plausible claim for relief. Specifically,
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`defendants contend that, in contrast to Form 18, the ’511 patent includes eighty claims, some of
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`which require the presence of multiple devices, and that the accused smartphones and tablets
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`have hundreds of different features and functionalities. Thus, defendants maintain, Rosetta must
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`identify "what features or functionalities of Defendants’ products are accused of infringement,
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`and what these features or functionalities purportedly ’map to’ within the claims of the ’511
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`patent." (Dkt. 89 at 8.) Defendants, however, cite to no controlling authority holding that such
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`information is required under Form 18. Indeed, although they cite the Federal Circuit’s general
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`statement in K-Tech that "[t]he adequacy of the facts pled depends on the breadth and
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`complexity of both the asserted patent and the accused product or system," that case reversed the
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`district court’s dismissal of the suit and found that the plaintiff’ s compliance with Form 18 was
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`sufficient to state a claim. See K-Tech, 714 F.3d at 1286-87. Moreover, the vast majority of
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`decisions that have dismissed complaints for failure to comply with Form 18 have involved
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`complaints that did not identify any specific products that allegedly infringed the patent in suit.
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`See, e.g., Addiction & Detoxification Inst. L.L.C., 2015 WL 4430128, a *3 (affirming dismissal
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`of the plaintiff’ s complaint and noting that "[t]here must be some allegation of specific services
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`or products of the defendants which are being accused"); Prism Techs., LLC v. A T&TMobility,
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`LLC, No. 8:12-CV-122, 2012 WL 3867971, at *5 (D. Neb. Sept. 6, 2012) (dismissing complaint
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`when the plaintiff broadly accused AT&T’s "various wireless products and data services" of
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`infringement); see also Bender v. LG Elecs. U.S.A., Inc., No. C 09-02114 JF (PVT), 2010 WL
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`889541, at *4 (N.D. Cal. Mar. 11, 2010) (noting that "[s]everal recent district court cases have
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`held that the factual allegations in a patent infringement complaint must identify the specific
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`products accused" (collecting cases)). That concern is not present here, as Rosetta has identified
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`specific, accused products. Because the amended complaint complies with Form 18, defendants’
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`motion to dismiss must be denied.
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`The court declines to order Rosetta to provide a more definite
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`statement.
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`III.
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`HTC’s Motion to Dismiss for Improper Venue
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`Finally, HTC has moved to dismiss for improper venue. Because HTC will be dismissed
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`without prejudice, the court will deny this motion as moot, without prejudice.
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`CONCLUSION AND ORDER
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`For the foregoing reasons, defendants’ motion to sever the proceedings (dkt. 92) is
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`granted. The claims against the following defendant groups are dismissed without prejudice: (1)
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`Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc.; (2) Motorola Mobility
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`LLC; (3) LG Electronics Co. and LG Electronics USA Inc.; and (4) HTC Corp. and HTC
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`America Inc. gosetta may file separate lawsuits against these four defendant groups.
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`Defendants’ motion to dismiss (dkt. 88) is denied with respect to Apple and HTC’s motion to
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`dismiss for improper venue (dkt. 95) is denied, without prejudice, as moot.
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`Date: November 10, 2015
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`U.S. District Judge Joan H. Lefkow
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`10
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`Page 10 of 10