Case 2:22-cv-00494-JRG-RSP Document 61 Filed 03/01/24 Page 1 of 9 PageID #: 1776
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`MULTIMEDIA TECHNOLOGIES PTE.
`LTD.,
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`Plaintiff,
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`v.
`LG ELECTRONICS INC. and LG
`ELECTRONICS USA, INC.,
`Defendant.
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`Case No. 2:22-cv-00494-JRG-RSP
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`REPORT AND RECOMMENDATION
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`Before the Court is Defendants LG Electronics Inc. and LG Electronics USA, Inc.’s
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`Motion to Dismiss Complaint for Failure to State a Claim. (Dkt. No. 24.) For the reasons that
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`follow, the motion should be GRANTED-IN-PART and DENIED-IN-PART.
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`I.
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`APPLICABLE LAW
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`A party may move to dismiss an action when the complaint fails “to state a claim upon
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`which relief can be granted . . . .” FED. R. CIV. P. 12(b)(6). A complaint states a sufficient claim if
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`it gives the defendant “fair notice of what the … claim is and the grounds upon which it rests.”
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`Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (ellipsis in original) (citations omitted).
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`When considering a Rule 12 motion to dismiss, a court accepts “all well-pleaded facts as
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`true and view[s] those facts in the light most favorable to the plaintiff.” Bowlby v. City of Aberdeen,
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`Miss., 681 F.3d 215, 219 (5th Cir. 2012) (citation omitted). The court may consider “the complaint,
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`any documents attached to the complaint, and any documents attached to the motion to dismiss
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`that are central to the claim and referenced by the complaint.” Lone Star Fund V (U.S.), L.P. v.
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`Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir. 2010) (citation omitted). The court must then
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`MULTIMEDIA EXHIBIT 2005
`LG v. Multimedia, IPR2024-00351
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`Case 2:22-cv-00494-JRG-RSP Document 61 Filed 03/01/24 Page 2 of 9 PageID #: 1777
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`decide whether those facts “state a claim that is plausible on its face.” Bowlby, 681 F.3d at 219.
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`“A claim has facial plausibility when the pleaded factual content allows the court to draw the
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`reasonable inference that the defendant is liable for the misconduct alleged.” Id. (quoting Ashcroft
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`v. Iqbal, 556 U.S. 662 (2009)).
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`This evaluation will “be a context-specific task that requires the reviewing court to draw
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`on its judicial experience and common sense.” Ashcroft, 556 U.S. at 679. “This standard ‘simply
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`calls for enough facts to raise a reasonable expectation that discovery will reveal evidence of’ the
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`necessary claims or elements.” In re S. Scrap Material Co., LLC, 541 F.3d 584, 587 (5th Cir. 2008)
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`(quoting Bell Atl., 550 U.S. at 556).
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`II.
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`ANALYSIS
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`LG argues that Multimedia has failed to state a claim as to direct, indirect, or willful
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`infringement. (Mot. at 2-3.) LG contends that Multimedia merely parrots the same legal conclusion
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`for all assertions of direct infringement, provides no factual basis for indirect infringement, and
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`provides no support for willful infringement. (Mot. at 4.)
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`A. DIRECT INFRINGEMENT
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`LG argues that Multimedia’s complaint fails as to direct infringement on three grounds: 1)
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`Multimedia did not provide an effective element-by-element pleading; 2) Multimedia only pleaded
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`certain accused devices were capable of infringing method claims and not that LG performed any
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`infringing method; and 3) the complaint asserts infringement of products older than the patents.
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`(Mot. at 6-23.)
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`LG contends that Multimedia’s complaint omits several limitations as to all patents, merely
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`parrots the claim language as to others, and in others still provides factual assertions too vague to
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`support the assertions in its complaint. (Mot. at 6-18.) In its motion and an accompanying exhibits,
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`LG identifies a variety of limitations or portions of limitations it alleges Multimedia’s complaint
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`does not discuss. (Id. at 6-11.) Citing cases outside of this district, LG contends “courts routinely
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`dismiss claims that fail to address all limitations of an asserted claim as being inadequately pled.”
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`(Id. at 6.) LC further cites Chapterhouse, LLC v. Shopify, Inc., No. 2:18-cv-00300-JRG, 2018 WL
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`6981828, at *2 (E.D. Tex. Dec. 11, 2018) that a “mere conclusory statement” cannot support a
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`claim of infringement without accompanying factual allegations. (Id. at 12, 17.)
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`LG further complains of Multimedia’s allegations regarding method claims. (Id. at 18-21.)
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`LG contends an assertion that “LG has directly infringed the [Asserted] Patent, and continues to
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`do so, by providing a device capable of performing or that allows a user to perform the method of
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`Claim 1” is deficient. (Id. at 19.) LG contends that because method claims are not infringed by the
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`sale of capable products, only by practicing the method, Multimedia’s assertions are deficient. (Id.)
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`LG likewise argues Multimedia’s assertion of LG’s “making, having made, using, selling, offering
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`for sale, and/or importing systems and methods…” is insufficient as Multimedia offers no factual
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`support for its contention that LG is “using” and that, at minimum, the Court should dismiss
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`allegations that making and sale infringe the method claims. (Id. at 20-21.)
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`LG complains of the allegations that “since 2014, the LG webOS operating system .. . has
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`been installed on LG Smart TVs” and the assertion that all versions of the LG webOS infringe.
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`(Id. at 21.) LG contends because several of the asserted patents did not issue until after 2015, such
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`allegations should be dismissed. (Id. at 22.)
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`In response, Multimedia argues that LG misconstrues the law. (Opp. at 7-8.) Multimedia
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`cites Blitzsafe Tex. LLC v. Volkswagen Grp of Am., Inc., No. 2:15-cv-1274-JRG-RSP, 2016 WL
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`4778699, at *4 (E.D. Tex. Feb. 16, 2016) that “asking the plaintiff to provide an element-by-
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`element analysis of the accused device in the complaint does not advance the goals of the Federal
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`Rules of Civil Procedure. (Id. at 7.) Multimedia further distinguishes Chapterhouse, arguing there
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`the complaint provided only a single conclusory statement that referred to a screenshot without
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`explanation, whereas Multimedia has done significantly more here. (Id. at 7-8.) Multimedia argues
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`it “identified the category of devices and technology that make up the Accused products” and “for
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`each count it alleges, Multimedia identifies the ways by which those Accused Products infringe
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`the relevant patent.” (Id. at 8.)
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`Multimedia further responds that its allegations of use are sufficient for the method claims.
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`(Id. at 9.) Multimedia contends that LG uses its own Smart TVs for testing, marketing, and other
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`purposes. (Id.) Multimedia also cites Akamai v. Limelight Network, 797 F.3d 1020 (Fed. Cir. 2015)
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`(en banc), arguing that LG is also liable for direct infringement where all steps of a claimed method
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`are attributed to LG. (Id.)
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`Further, Multimedia contends LG’s argument regarding old product versions goes to
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`damages and is best resolved during the course of discovery and is not a matter of sufficiency to
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`be decided here. (Id. at 9-10.)
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`Multimedia also argues that its infringement contentions moot LG’s argument that it should
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`provide element-by-element allegations in its complaint. (Id. at 10-12.) LG replies to this argument
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`contending that Multimedia is limited to its complaint for this issue and cannot point to external
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`documents to meet its pleading burden. (Reply at 5-7.)
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`The Court finds that Multimedia has provided sufficiently definite allegations of
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`infringement. The rules do not require an element-by-element analysis in the complaint. See
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`Blitzsafe Tex. LLC v. Volkswagen Grp of Am., Inc., No. 2:15-cv-1274-JRG-RSP, 2016 WL
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`4778699, at *4 (E.D. Tex. Feb. 16, 2016). With this background, LG’s complaints largely fall
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`away. Multimedia has identified the products it alleges infringe, the processes by which
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`Multimedia believes they infringe, and some tying of those processes to the language of the claims.
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`This satisfies the requirement of “a short and plain statement of the claim showing the pleader is
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`entitled to relief.” Fed. R. Civ. P. 8(a)(2).1
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`Likewise, the Court finds Multimedia’s allegations of “use” of the method claims is
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`sufficient. In light of the discussion Multimedia includes as to what processes infringe,
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`Multimedia’s allegation of “use” is sufficiently clear to support its complaint.
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`Further, the Court finds that LG is correct that products in use prior to the issuance of the
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`patents cannot infringe. As such, it is appropriate for this Court to dismiss claims as to such
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`products.2
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`B. INDIRECT AND WILLFUL INFRINGEMENT
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`LG contends, in addition to failing to plead direct infringement, Multimedia fails to
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`sufficiently plead the knowledge and intent requirements of indirect and willful infringement.
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`(Mot. at 23-29.)
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`LG contends Multimedia’s allegations of knowledge based on LG’s patent prosecution
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`practices and LG’s patent monitoring practices is deficient. (Id. at 24.) LG contends such mere
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`speculation is not an allegation that LG has knowledge of the asserted patents that might support
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`Multimedia’s indirect and willfulness claims. (Id. at 24-25.) LG further contends that Multimedia’s
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`single conclusory allegations of knowledge of infringement is also insufficient. (Id. at 25.)
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`1 This should be clear in light of the no longer binding Form 18 in the Appendix of the Federal Rules of Civil
`Procedure. Form 18 is a sample complaint for patent infringement consisting of only a few paragraphs and showing
`how simply a claim can be stated. Estech Sys., Inc. v. Target Corp., No. 220CV00123JRGRSP, 2020 WL 6534094,
`at *3 (E.D. Tex. Aug. 27, 2020), report and recommendation adopted, No. 220CV00123JRGRSP, 2021 WL 966017
`(E.D. Tex. Mar. 12, 2021)
`2 This ruling is limited in that infringement is impossible prior to issuance. It should not be construed as a finding
`that the products do not practice the patent, that information regarding the products prior to the issuance of the
`patents is or is not discoverable, or that the products can constitute prior art. Such issues are separate.
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`LG also contends Multimedia fails to provide sufficient allegations of specific intent to
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`infringe for induced infringement. (Id. at 25-27.) LG contends that Multimedia’s single conclusory
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`statement that LG had specific intent and generalized allegations that “selling, marketing,
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`advertising, promotion, support, and distribution of the Accused Products” are insufficient as a
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`matter of law. (Id. at 26-27.)
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`LG likewise contends Multimedia has failed to plead an absence of substantial non-
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`infringing use needed to support contributory infringement. (Id. at 27-29.) Here too, LG contends
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`Multimedia has only a single conclusory allegation that there are no substantial non-infringing
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`uses. (Id. at 28.)
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`Finally, LG contends Multimedia’s allegations of willful infringement are not supported
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`by any allegation of knowledge of the patent or of the malicious nature of the alleged infringement.
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`(Id. at 29.)
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`Multimedia first responds that for a motion to dismiss, service of the Complaint to establish
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`knowledge for indirect infringement is effective as pre-suit and post-filing are not separated at this
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`stage. (Opp. at 13-14.) Multimedia also contends that its pre-suit allegations of knowledge are
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`themselves sufficient. (Id. at 15.) Multimedia contends that the allegations LG contends are
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`“speculative” have been found sufficient in other cases. (Id. (citing Soverain IP, LLC v. Microsoft
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`Corp., No. 2:17-cv-00204-RWS-RSP, 2018 WL 1465792, at *2 (E.D. Tex. Mar. 26, 2018)).)
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`Multimedia also contends “it is not necessary to provide detailed factual support for each
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`and every element of inducement.” (Id. at 16 (citing InMotion Imagery Techs. V. Brian Damage
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`Filsm, No. 2:11-cv-414-JRG, 2012 WL 3283371, at *3).) Multimedia argues this is because Rule
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`9(b) provides “malice, intent, knowledge, and other conditions of a person’s mind may be alleged
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`generally.” (Id. at 17.) Multimedia further argues that its allegations of specific intent are supported
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`by more than a single conclusory allegation. (Id. at 17.) It contends that a plaintiff does not need
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`to identify the way in which the selling, marketing, advertising, etc., “specifically instructed
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`customers, which customers were specifically instructed, or which advertisements [were]
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`published” at the pleading stage. (Id. at 18 (citing Motiva Pats. LLC v. Sony Corp., 408 F. Supp.
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`3d 819, 831-32 (E.D. Tex. 2019)).)
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`Next, Multimedia argues that its allegations regarding non-infringing uses are sufficient.
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`Multimedia contends that courts have found that it is sufficient to merely plead the absence of such
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`uses and that this Court has held similarly. (Id. at 19.) Multimedia argues that its allegations
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`identifying the alleged infringement and identifying the way in which the Accused product allows
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`a user to practice the recited invention is more than sufficient. (Id. at 19-20.)
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`Finally, Multimedia argues that its allegations “that the defendant had knowledge of the
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`patents-in-suit at least as of the date of service of the complaint coupled with allegations that the
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`defendant had knowledge . . . was sufficient to state a claim of willful infringement.” (Id. at 20
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`(citing T-Rex Prop. AB v. Regal Entm’t Grp., No. 6:16-cv-927-RWS-KNM, 2017 WL 4229372,
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`at *9 (E.D. Tex. Aug. 31, 2017).)
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`First, the Court finds that Multimedia has sufficiently pleaded LG’s knowledge of the
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`patents at issue. LG’s complaint that Multimedia’s allegations are mere speculation is misplaced.
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`“There is no requirement for [a patentee] to ‘prove its case at the pleading stage.’” Lifetime Indus.,
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`Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017) (alteration in original). A pleading
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`based on specific prosecution activities that LG has knowledge of the patents is not so outlandish
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`that the Court will not give it weight at a motion to dismiss stage.
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`Second, while Multimedia’s allegations of intent may be less substantial than “(1)
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`instruction manuals for using the [Accused Products]in an infringing manner; (2) directions to
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`customers and end-users for using the [Accused Products] in an infringing manner; and (3)
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`advertisements and promotional materials for infringing uses of the [Accused Products],” as in
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`Motiva, they are still sufficient here. See Motiva Pats., LLC v. Sony Corp., 408 F. Supp. 3d 819,
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`830 (E.D. Tex. 2019). The Court finds that LG’s complaint is equivalent to requesting the Court
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`require identification of specific portions of the marketing and advertising Multimedia contends
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`demonstrate LG’s intent. Such a requirement has already been rejected by this Court and Rule 9(b)
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`provides intent may be pleaded generally, thus the Court finds that Multimedia’s allegations are
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`sufficient.
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`Likewise, the Court finds Multimedia’s contentions as to non-infringing uses is sufficient.
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`The Court finds Multimedia’s contentions are similar to those in Arigna Tech. Ltd. v. Bayerische
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`Motoren Werke AG, No. 2:21-CV-00172-JRG, 2022 WL 610796, at *6 (E.D. Tex. Jan. 24, 2022).
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`There the Court found the nature of the patented technology and the Accused Products supported
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`the allegation that there were no non-infringing uses. So too here where Multimedia has explained
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`how the Accused Products allow a user to practice the recited invention, such that it is plausible
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`that there are no non-infringing uses.
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`Last, the Court finds that Multimedia’s willfulness allegations are similarly sufficient. As
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`provided above, Multimedia has pleaded knowledge. For malicious intent, Fed. R. Civ. P. 9(b)
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`provides malice and intent may be pleaded generally. The Court will not require Multimedia’s
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`complaint to meet a higher bar.
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`III. CONCLUSION
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`For the reasons discussed above, it is RECOMMENDED that the motion to dismiss be
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`GRANTED-IN-PART as to products in use prior to the issuance of the asserted patents and
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`otherwise DENIED.
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`A party's failure
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`to file written objections
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`to
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`the findings, conclusions, and
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`recommendations contained in this report within 14 days bars that party from de novo review by
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`the District Judge of those findings, conclusions, and recommendations and, except on grounds of
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`plain error, from appellate review of unobjected-to factual findings and legal conclusions accepted
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`and adopted by the district court. Fed. R. Civ. P. 72(b)(2); see Douglass v. United Servs. Auto
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`Ass'n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc). Any objection to the Report and
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`Recommendation must be filed in ECF under the event “Objection to Report and
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`Recommendations [cv, respoth]” or it may not be considered by the District Judge.
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`9
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 29th day of February, 2024.
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