Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`PROXENSE, LLC,
`
`Plaintiff,
`
`v.
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
`Case No. 6:23-cv-319-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANT MICROSOFT CORPORATION’S OPENING BRIEF IN SUPPORT OF
`ITS MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM
`
`1
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`MICROSOFT 1017
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`

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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 2 of 20
`
`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .............................................................................................................. 1 
`
`STATEMENT OF RELEVANT FACTS ........................................................................... 2 
`
`A.
`
`B.
`
`C.
`
`Proxense Asserts Six Patents Relating to Authentication ....................................... 2 
`
`Proxense Does Not State Specifically Which Microsoft Product is Accused ........ 3 
`
`Proxense Admits That The Alleged Infringement Involves the Actions and
`Devices of Multiple Third Parties ........................................................................... 3 
`
`LEGAL STANDARD ......................................................................................................... 4 
`
`ARGUMENT ...................................................................................................................... 6 
`
`A.
`
`Proxense’s Complaint Does Not Allege Which Microsoft Products Infringe Or
`How They Allegedly Infringe ................................................................................. 6
`
`1. No Identification of Accused Product(s) .......................................................... 6
`
`2.
`
` No Allegation That Microsoft “Persistently Stor[es] Biometric Data” or
`Communicates with a “Hybrid Device” in a “Proximity Zone” ....................... 7 
`
`Proxense’s Complaint Violates The Fundamental Rule Prohibiting Divided
`Infringement ............................................................................................................ 9 
`
`Dismissal With Prejudice Is Warranted As Any Amendment Would Be Futile .. 14
`
`B.
`
`C.
`
`V.
`
`CONCLUSION ................................................................................................................. 14 
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`i
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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 3 of 20
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech.,
`709 F.3d 1348 (Fed. Cir. 2013)................................................................................................13
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................6
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................6
`
`Bot M8 LLC v. Sony Corp. of Am.,
`4 F.4th 1342 (Fed. Cir. 2021) ..........................................................................................6, 9, 10
`
`Burke v. Ocwen Loan Servicing,
`855 F. App’x 180 (5th Cir. 2021) ............................................................................................16
`
`Centillion Data Sys., LLC v. Qwest Commnc’ns Int’l Inc.,
`631 F.3d 1279 (Fed. Cir. 2011)............................................................................................7, 13
`
`De La Vega v. Microsoft Corp.,
`No. 19-cv-00612- ADA, 2020 WL 3528411 (W.D. Tex. Feb. 7, 2020) .......................6, 11, 14
`
`Emtel, Inc. v. Lipidlabs, Inc., et al.,
`583 F.Supp.2d 811 (S.D. Tex. 2008) .......................................................................................15
`
`ESW Holdings, Inc. v. Roku, Inc.,
`No. 6-19-CV-00044-ADA, 2021 WL 1069047 (W.D. Tex. Mar. 18, 2021) ...........................13
`
`Intellectual Ventures I LLC v. Motorola Mobility LLC,
`870 F.3d 1320 (Fed. Cir. 2017)................................................................................................13
`
`L&W, Inc. v. Shertech, Inc.,
`471 F.3d 1311 (Fed. Cir. 2006)..................................................................................................7
`
`Mann v. Boatwright,
`477 F.3d 1140 (10th Cir. 2007) .................................................................................................2
`
`Omega Patents, LLC v. CalAmp Corp.,
`920 F.3d 1337 (Fed. Cir. 2019)................................................................................................14
`
`Proxense, LLC v. Samsung Elecs. Co.,
`No. 6.21-CV-00210, Dkt. No. 1 ...............................................................................................15
`
`Ruby Sands LLC v. Am. Nat’l Bank of Tex.,
`No. 2:15-cv-1955-JRG, 2016 WL 3542430 (E.D. Tex. June 28, 2016) ..............................6, 11
`
`ii
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`3
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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 4 of 20
`
`TABLE OF AUTHORITIES (cont’d)
`
`Synchronoss Techs. v. Dropbox, Inc.,
`987 F.3d 1358 (Fed. Cir. 2021)............................................................................................7, 13
`
`Page(s)
`
`TecSec, Inc. v. Int'l Bus. Machines Corp.,
`769 F. Supp. 2d 997 (E.D. Va. 2011), aff'd, 466 F. App’x 882 (Fed. Cir. 2012) ....................13
`
`TeleSign Corp. v. Twilio,
`cv 16-2106-PSG, 2016 WL 4703873 (C.D. Cal. Aug. 3, 2016) ................................................9
`
`Valdez v. Victory Med. Ctr. Southcross,
`No. SA-16-CA-1016-FB, 2016 WL 11605674 (W.D. Tex. Dec. 12, 2016) ............................16
`
`Vervain, LLC v. Micron Tech., Inc.,
`No. 6:21-cv-00487-ADA, 2022 WL 23469 (W.D. Tex. Jan. 3, 2022) ................................6, 10
`
`Zitovault v. IBM,
`No. 3:16-cv-0962-M, 2018 WL 2971179 (N.D. Tex. Mar. 29, 2018) .......................................9
`
`Statutes
`
`35 U.S.C. § 271 (a) ........................................................................................................................13
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`iii
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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 5 of 20
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`I.
`
`INTRODUCTION
`
`Proxense LLC’s (“Proxense”) Complaint fails to specifically state what products are
`
`being accused, how any product is accused of infringing every limitation of any claim, and why
`
`the accused infringement is allegedly willful. With a lengthy1 yet deficient pleading, Proxense
`
`alleges that Microsoft infringes three patents on biometric data authentication and three patents
`
`on hybrid devices in proximity – but never even defines the “Accused Product.” In fact, the
`
`Complaint leaves unclear whether there are multiple accused products, as Proxense
`
`inconsistently uses both the undefined terms, “Accused Product” and “Accused Products,”
`
`throughout the Complaint. Compounding the confusion, Proxense names a multitude of non-
`
`Microsoft products, including: a) products from Apple and Google, b) an “authenticator”; and c)
`
`a “resource”, as contributing to the amorphous infringement. See, e.g., Compl. ¶¶ 47, 59, 60.
`
`Moreover, Proxense fails to allege that any single product—alone or in combination—practices
`
`all of the claimed limitations. Withholding from Microsoft what products are accused, let alone
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`how Microsoft’s products allegedly correlate with each claim limitation, Proxense fails to state a
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`plausible claim for patent infringement. For this reason alone, Proxense’s Complaint should be
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`dismissed under Fed. R. Civ. P. 12(b)(6) with prejudice.
`
`The deficiencies in Proxense’s Complaint go even further. Proxense independently fails
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`to meet the minimum pleading requirements because it violates the prohibition against divided
`
`infringement. Specifically, Proxense fails to state a plausible claim that Microsoft “makes, uses,
`
`offers to sell, or sells” a product that infringes the Asserted Patents because Proxense’s
`
`1 See Fed. R. Civ. P. 8(a) (requiring a “short and plain statement of the claim” showing
`entitlement to relief); Mann v. Boatwright, 477 F.3d 1140, 1148 (10th Cir. 2007) (affirming Rule
`8 dismissal when it was impossible to “separate the wheat from the chaff” in the complaint and
`because “[i]t was not the district court’s job to stitch together cognizable claims for relief from
`the wholly deficient pleading”).”
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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 6 of 20
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` 
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`allegations include the actions and products of multiple third parties, including device
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`manufacturers and app developers. Indeed, black letter law requires a single entity to commit all
`
`the acts necessary to infringe a patent, either personally or vicariously, and Proxense fails to
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`plead any allegations that Microsoft uses or controls all the necessary components of the asserted
`
`claims. Due to this fatal flaw, dismissal of Proxense’s infringement allegations is also
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`warranted.
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`II.
`
`STATEMENT OF RELEVANT FACTS
`
`A.
`
`Proxense Asserts Six Patents Relating to Authentication
`
`Proxense’s Complaint alleges that Microsoft directly infringes at least one claim of six
`
`asserted patents relating to authentication. Three of these patents, the ’730, ’954, and ’905
`
`patents (collectively, “the Biometric PDK patents”), titled “Biometric Personal Data Key (PDK)
`
`Authentication,” relate to “systems, devices, and methods for an integrated device that
`
`persistently stores biometric data for a user in a tamper-resistant format.” Compl. ¶¶ 21-23, 28.
`
`These patents all require “persistently storing biometric data” of a user, “receiving [] scan data
`
`from a biometric scan,” and “comparing the scan data to the biometric data.” See ’730 patent at
`
`cl. 1; ’954 patent at cl. 1; ’905 patent at cl. 1. The other three patents, the ’042, ’289, and ’960
`
`patents (collectively, “the Hybrid Device patents”), titled “Hybrid Device Having a Personal
`
`Digital Key and Receiver-Decoder Circuit and Methods of Use,” relate to “systems, devices, and
`
`methods of utilizing personal digital keys for verifying a user in order to enable applications,
`
`functions or services.” Compl. ¶¶ 24-26, 28. These patents all require a device that
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`communicates wirelessly with an external “personal digital key” within a proximity zone. ’042
`
`patent at cl. 10; ’289 patent at cl. 14; ’960 patent at cl. 14. Proxense’s Complaint does not
`
`identify which specific Microsoft product is allegedly infringing or how any Microsoft product
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`allegedly correlate with each of the claim limitations. See Compl. ¶¶ 41-252.
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`B.
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`Proxense Does Not State Specifically Which Microsoft Product is Accused
`
`Proxense does not define “Accused Product” or “Accused Products,” terms used
`
`throughout its Complaint. Id. ¶¶ 46-53, 79, 108. Instead of defining the Accused Products,
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`Proxense vaguely describes the “infringing architecture” as consisting of “[t]hree primary
`
`components.” Id. ¶47. These three primary components appear to be “Microsoft Identity
`
`Platform,”2 an “authenticator” that can be “developed and sold by Microsoft’s [third party]
`
`partners,” and a “resource,” such as “an application, website, or subscription.” Id. ¶¶ 47, 51, 52.
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`Moreover, throughout the Complaint, Proxense refers generally to “Microsoft’s universal
`
`platform password-less architecture,” without any further specificity. See, e.g., id. ¶¶ 33, 46, 49,
`
`61, 62, 65, 69, 72, 74, 76, 78, 80. Proxense does not offer any claim charts mapping how
`
`Microsoft’s products allegedly correlate with each of the claim limitations.
`
`C.
`
`Proxense Admits That The Alleged Infringement Involves the Actions and
`Devices of Multiple Third Parties
`
`Proxense does not allege that Microsoft makes, uses, sells, or imports all components of
`
`any system and does not provide any factual allegations to support such an allegation. Id. ¶¶
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`109, 143, 178, 201, 224, 247. Instead, Proxense expressly acknowledges that the actions and
`
`devices of multiple third parties, including mobile device manufacturers and mobile app
`
`developers, are required. Throughout its Complaint, Proxense specifically accuses “Android”
`
`and “iOS devices,” neither of which is controlled by Microsoft. See, e.g., id. ¶¶ 33, 49, 51, 54,
`
`55, 59, 60, 64, 85, 86, 87, 88, 89, 97, 119, 120, 121, 122, 123, 131, 153, 154, 155, 156, 157, 165,
`
`196, 219, 242; see also Dkts. 1-18, 1-30, 1-33, 1-42 (Android exhibits) and Dkts. 1-19, 1-31 (iOS
`
`exhibits). Further, Proxense alleges that third party developers can “integrate their applications
`
`2 Contrary to Proxense’s suggestion-by-capitalization, the “Microsoft identity platform” is not a
`discrete Microsoft product, but rather is an offering with several components. See, e.g., Dkt. 1-
`26.
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`. . . in order to offer [the accused system of] cross platform password-less authentication via
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`biometrics and the use of ID and access tokens to their customers and subscribers.” Id. ¶ 51. To
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`confirm that the accused system requires the devices and actions of third parties, Proxense
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`acknowledges that at least two of the “three primary components” of the “infringing
`
`architecture” can be provided by a third party “subscribing business,” third party “subscribing
`
`developer,” or generally one of Microsoft’s third-party partners. Id. ¶¶ 47, 51, 52. One of these
`
`three “primary” components is the “authenticator,” which Proxense recognizes can be
`
`“developed and sold by Microsoft’s [third party] partners.” Id. ¶ 47. Another of the three
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`“primary” components, which Proxense calls the “resource,” “may be an application, website,
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`and/or a subscription offered by . . . a subscribing business[] or a subscribing developer.” Id.
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`III. LEGAL STANDARD
`
`To survive a motion to dismiss, “a complaint must contain sufficient factual matter,
`
`accepted as true, to ‘state a claim to relief that is plausible on its face’.” Ashcroft v. Iqbal, 556
`
`U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
`
`Allegations “merely consistent with” liability are insufficient. See Twombly, 550 U.S. at 557.
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`To meet the plausibility standard, plaintiff must plead “factual content that allows the court to
`
`draw the reasonable inference that the defendant is liable for the misconduct alleged” and its
`
`claim must be based on “more than a sheer possibility” of liability. See Iqbal, 556 U.S. at 678.
`
`In a patent infringement case, a plaintiff must “explicitly plead facts to plausibly support”
`
`its assertions of direct infringement. See Ruby Sands LLC v. Am. Nat’l Bank of Tex., No. 2:15-
`
`cv-1955-JRG, 2016 WL 3542430, at *2 (E.D. Tex. June 28, 2016). “There must be some factual
`
`allegations that, when taken as true, articulate why it is plausible that the accused product
`
`infringes the patent claim.” Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1352-53 (Fed. Cir.
`
`2021). Failing to show that the accused products plausibly meet all claim limitations renders the
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`allegations insufficient. See, e.g., De La Vega v. Microsoft Corp., No. 19-cv-00612- ADA, 2020
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`WL 3528411, at *6 (W.D. Tex. Feb. 7, 2020) (“Because Plaintiff does not include even a short
`
`written description of how the accused instrumentalities meet the ‘coupling’ limitation, his
`
`complaint fails to state a claim upon which relief can be granted.”). Moreover, a greater level of
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`detail is required for complex technologies or material elements. See Bot M8, 4 F. 4th at 1353
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`(level of detail required depends on “the complexity of the technology, the materiality of any
`
`given element to practicing the asserted claim(s), and the nature of the allegedly infringing
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`device”); see also Vervain, LLC v. Micron Tech., Inc., No. 6:21-cv-00487-ADA, 2022 WL
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`23469, at *5 (W.D. Tex. Jan. 3, 2022) (“Based on the complexity and materiality of the claims,
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`the Court concludes that pleading infringement . . . will require more than attaching photos of the
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`Accused Products and summarily alleging that each and every limitation is satisfied.”).
`
`A plaintiff has the burden of showing that each accused product infringes the asserted
`
`claims. See L&W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir. 2006) (“[Plaintiff] must
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`make a prima facie showing of infringement as to each accused device . . . .”). For system
`
`claims, direct infringement requires that a single defendant make, use, or sell all portions of the
`
`system. See Centillion Data Sys., LLC v. Qwest Commnc’ns Int’l Inc., 631 F.3d 1279, 1288
`
`(Fed. Cir. 2011); see also Synchronoss Techs. v. Dropbox, Inc., 987 F.3d 1358, 1368 (Fed. Cir.
`
`2021) (“Because Drop-box does not provide its customers with any hardware in conjunction with
`
`its accused software, Dropbox does not make, sell, or offer for sale the complete invention.”).
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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 10 of 20
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`IV.
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`ARGUMENT
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`A. Proxense’s Complaint Does Not Allege Which Microsoft Products Infringe or
`How They Allegedly Infringe
`
`1. No Identification of Accused Product(s)
`
`Proxense’s Complaint relies on a hodgepodge of features taken from websites describing
`
`several different Microsoft authentication offerings, yet never states which offering is accused of
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`infringement, much less how it infringes. The Complaint merely throws around names of some
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`Microsoft solutions or products—ranging from the “Microsoft [i]dentity [p]latform,” “Azure
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`Active Directory,” “Windows Hello,” to “Microsoft Authenticator App”—and non-Microsoft
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`products—ranging from Android and iOS phones to “authenticators developed by Microsoft’s
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`partners.” Compl. ¶¶ 50, 51; see also Dkts. 1-18, 1-30, 1-33, 1-42 (Android exhibits) and Dkts.
`
`1-19, 1-31 (iOS exhibits). But Proxense never alleges that any single Microsoft product or
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`service (or even a specific combination of products, for that matter) meet the limitations of any
`
`asserted claim. Rather, Proxense resorts to vaguely describing aspects of a multitude of different
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`generic products without alleging how they work together to allegedly infringe satisfy the
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`numerous elements of the asserted claims. Paragraph 54 is exemplary:
`
`54. Microsoft directly infringes the Patents-in-Suit by creating and utilizing a
`universal platform password-less architecture incorporating authenticators,
`including Windows Hello on Windows 10 and 11, Microsoft Authenticator App on
`Android and iOS devices, and controlling the action of its partners to create
`authenticators that work on Windows, the Microsoft Edge browser, and online
`Microsoft accounts, incorporating the Microsoft Identity platform which controls
`the actions of authenticators and the dissemination of bear [sic] tokens and other
`such access messages, offering services, applications subscriptions and other
`such resources hosted by separate systems which are accessed via tokens provided
`by Microsoft Identity Platform, and offering businesses and developers identity and
`access management services which entail requesting user authentication and
`receiving tokens in a manner directed and controlled by Microsoft, including the
`use of Microsoft Authentication Library.
`
`Id. ¶ 54; see also id. at ¶¶ 81-252.
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`According to Proxense, an accused product must be three different components with
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`varying functions. Id. ¶ 47 (claiming the “infringing architecture” consists of “[t]hree primary
`
`components” – the Microsoft identity platform, an “authenticator,” and a “resource” that must be
`
`on a “system separate and distinct from [the] Microsoft [i]dentity [p]latform”). Yet Proxense
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`fails to plead facts sufficient to support a theory that a combination of products infringe the
`
`Asserted Patents. See Bot M8, 4 F.4th at 1353; TeleSign Corp. v. Twilio, cv 16-2106-PSG, 2016
`
`WL 4703873, at *3 (C.D. Cal. Aug. 3, 2016) (finding plaintiff failed to state a claim for
`
`infringement when it neither plausibly alleged any one product performed all elements nor that
`
`multiple products were used “conjunctively” to infringe); Zitovault v. IBM, No. 3:16-cv-0962-M,
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`2018 WL 2971179, at *3 (N.D. Tex. Mar. 29, 2018) (stating it would be improper to “only chart
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`[one product’s] functionality for some limitations and [another product’s] functionality for other
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`limitations”). That is, Proxense fails to allege how various products together might meet the
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`limitations. Proxense simply does not describe how any specific combination of components
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`might plausibly work “conjunctively” together to meet the limitations. See Telesign, 2016 WL
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`4703873, at *3.
`
`Thus, Proxense’s allegations fail to make out a plausible claim for infringement. See id.;
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`Bot M8, 4 F.4th at 1355 (“Although the FAC alleges that the PS4 contains multiple storage
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`media and multiple authentication programs, we agree with the district court… [that they] do not
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`plausibly allege that gaming information and a mutual authentication program are stored together
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`on the same memory.”).
`
`2. No Allegation That Microsoft “Persistently Stor[es] Biometric Data” or
`Communicates with a “Hybrid Device” in a “Proximity Zone”
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`In addition to the deficiencies above, Proxense fails to allege that any product meets
`
`certain required limitations of the Asserted Patents. The Biometric PDK Patents require
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`“persistently storing biometric data” of a user, “receiving [] scan data from a biometric scan,”
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`and “comparing the scan data to the biometric data.” See ’730 patent at cl. 1; ’954 patent at cl. 1;
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`’905 patent at cl. 1. For these limitations, however, Proxense does not identify how it alleges
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`that any Microsoft product stores any biometric data or how it alleges the biometric data is
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`stored, received, or compared. See, e.g., Compl. ¶¶ 86, 87 (never identifying a Microsoft
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`product). As a result, Microsoft is given no notice of what Proxense is accusing for these
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`limitations.
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`Similarly, for the Hybrid Device Patents, Proxense fails to allege that any products meet
`
`certain limitations. Specifically, these three patents require circuitry that communicates
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`wirelessly or a “wireless communication interface of a device” with an external “personal digital
`
`key” within a proximity zone. ’042 patent at cl. 10; ’289 patent at cl. 14; ’960 patent at cl. 14.
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`Proxense, however, does not identify what it alleges is a “receiver-decoder circuit” or a “wireless
`
`communication interface of a device,” or what they allegedly communicate with within a
`
`“proximity zone.”
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`Indeed, complaints that omit specific claim limitations are “insufficient to satisfy the
`
`Iqbal/Twombly standard” and thus insufficient to “plausibly allege infringement.” Bot M8, 4 F.
`
`4th at 1355. For example, in Bot M8, the Federal Circuit found that “[w]hile Bot M8 point[ed] to
`
`different storage components in the allegedly infringing devices, it never sa[id] which one or
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`ones satisfy[ied] the mutual authentication limitation.” Id. Here, Proxense also points to various
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`products or services from multiple parties, but never alleges which one or ones satisfy the
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`aforementioned limitations. See id.
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`Proxense thus fails the most basic requirements of governing patent law, which requires
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`allegations showing how the accused products meet the claimed limitations. See, e.g., Vervain
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`LLC, 2022 WL 23469, at *9 (granting motion to dismiss where complaint failed to sufficiently
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`plead factual allegations to support a reasonable inference that the accused product practiced the
`
`claimed “hot blocks” and “data integrity test” limitations); De La Vega, 2020 WL 3528411, at *7
`
`(dismissing direct infringement claims for failure to allege “coupling” limitation met by accused
`
`products); Ruby Sands LLC, 2016 WL 3542430, at *4 (dismissing direct infringement claim
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`“constructed upon a fatally flawed foundation” as no factual allegations “even remotely
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`suggest[ed]” that the defendant sold the product that was alleged to meet the claim limitation).
`
`These omissions further show that Proxense’s allegations are fatally incomplete.
`
`B. Proxense’s Complaint Violates the Fundamental Rule Prohibiting Divided
`Infringement
`
`Proxense separately fails to meet the minimum pleading requirements because it violates
`
`the fundamental rule prohibiting divided infringement. In particular, Proxense fails to allege
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`(and cannot allege) that Microsoft directly infringes the Asserted Patents when the actions and
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`products of: a) multiple third party device manufacturers; b) third party “authenticators”; and c)
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`and third party “resources” are pled.
`
`Proxense acknowledges that at least two of the “three primary components” of the
`
`“infringing architecture”—which Proxense calls the “authenticator” and the “resource”—can be
`
`provided by a third party “subscribing business,” third party “subscribing developer,” or
`
`generally one of Microsoft’s third party partners. Compl. ¶¶ 47, 51, 52; see also Dkts. 1-18, 1-
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`30, 1-33, 1-42 (Android exhibits) and Dkts. 1-19, 1-31 (iOS exhibits). As for these two
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`components, Proxense concedes that: “the resource is on a system separate and distinct from
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`Microsoft…” and is a “separate and distinct entit[y]” from the Microsoft identity platform. Id.
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`(emphasis added). By Proxense’s own pleading, at least two of the three primary components of
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`the infringing architecture can be or is provided by third parties, not Microsoft.
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`Proxense repeatedly admits that any infringing product would require the acts and
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`devices of third party mobile device manufacturers, such as Google for Android devices and
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`Apple for iOS devices. Throughout its Complaint, Proxense specifically accuses “Android” and
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`“iOS” devices – neither of which is controlled by Microsoft. See, e.g., id. ¶¶ 33, 49, 51, 54, 55,
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`59, 60, 64, 85, 86, 87, 88, 89, 97, 119, 120, 121, 122, 123, 131, 153, 154, 155, 156, 157, 165,
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`196, 219, 242; see also Dkts. 1-18, 1-30, 1-33, 1-42 (Android exhibits) and Dkts. 1-19, 1-31 (iOS
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`exhibits). In particular, Proxense alleges that “Android devices” and “iOS devices” are
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`necessary components of any alleged infringement because it is those third party devices that
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`“persistently stor[e] biometric data in a tamper proof format.” Id. ¶¶ 59, 60. For example,
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`Proxense’s Complaint alleges the following:
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`“Android’s implementation guides require tamper-proof raw fingerprint data or
`derivates (for example, templates) [that] must never be accessible from outside the
`sensor driver or TEE (trusted execution environment) and fingerprint acquisition,
`enrollment, and recognition must occur inside the TEE. See Exhibit 17. When
`following these guidelines, requiring acquisition and recognition to occur within
`the TEE means that the biometric data never leaves the TEE. Android’s TEE,
`called Trusty, uses ARM’s TrustzoneTM to virtualize the main processor and create
`a secure trusted execution environment isolated from the rest of the system. See
`Exhibit 29. Accordingly, the biometric data, which never leaves the TEE, also
`never leaves the Trustzone housing Trusty. Keeping biometric data within the
`Trustzone, Android phones persistently store biometric data in a tamper proof
`format. Furthermore, access to the biometric hardware on Android devices is
`controlled by Fingerprint HIDL. Id. The methods enabled by the Fingerprint HIDL
`do not permit altering biometric data. See id.”
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`Id. ¶ 59 (internal citations omitted and emphasis added). Similarly, Proxense alleges the
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`following for Apple’s iOS devices:
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`“Apple’s Secure Enclave is a dedicated secure subsystem … isolated from the main
`processor to provide an extra layer of security designed to keep sensitive data secure
`even when the Application Processor kernel becomes compromised. See Exhibit
`18. During enrollment, the Secure Enclave processes, encrypts, and stores the
`corresponding Touch ID and Face ID template data. Id. The Secure Enclave thus
`provides a tamper proof format for sensitive data, such as biometric data, even
`when a hack or other malicious software compromises the Application Processor.”
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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 15 of 20
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`Id. ¶ 60 (internal citations omitted and emphasis added). Although the Complaint focuses on
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`Android and iOS, Proxense does not limit itself to these third parties. Proxense also alleges that
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`devices “manufactured by Microsoft[’s] partners, such as [but not limited to] Dell” infringe or
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`are necessary to infringe the Patents-in-Suit by “persistently stor[ing] user data.” Id. ¶ 57.
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`To demonstrate a defendant is liable for direct infringement, a plaintiff must show that
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`the defendant “without authority makes, uses, offers to sell, or sells any patented invention,
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`within the United States or imports into the United States any patented invention during the term
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`of the patent.” 35 U.S.C. § 271 (a). “[F]or a party to be liable for direct patent infringement
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`under 35 U.S.C. § 271(a), that party must commit all the acts necessary to infringe the patent,
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`either personally or vicariously.” Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 709
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`F.3d 1348, 1362 (Fed. Cir. 2013).
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`The Federal Circuit has explained that “to ‘make’ a system under §271(a), [a party]
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`would need to combine all of the claim elements.” Centillion, 631 F.3d at 1288. And “use” of a
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`patent system requires that a party “put the invention into service, i.e., control the system as a
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`whole and obtain benefit from it.” Intellectual Ventures I LLC v. Motorola Mobility LLC, 870
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`F.3d 1320, 1328 (Fed. Cir. 2017) (quoting Centillion, 631 F.3d at 1284). In other words, “a
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`person must control (even if indirectly) and benefit from each claimed component.” Id. at 1329
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`(emphasis added); see also Synchronoss, 987 F.3d at 1369 (“Direct infringement by ‘use’ of a
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`claimed system requires use of each and every element of the system.”); ESW Holdings, Inc. v.
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`Roku, Inc., No. 6-19-CV-00044-ADA, 2021 WL 1069047, at *5 (W.D. Tex. Mar. 18, 2021)
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`(accused infringer cannot infringe system claim where it “neither controls each system
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`component recited in [the claim] nor makes, sells, or offers to sell [all of] the claimed system.”);
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`TecSec, Inc. v. Int'l Bus. Machines Corp., 769 F. Supp. 2d 997, 1010 (E.D. Va. 2011), aff'd, 466
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`15
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`Case 6:23-cv-00319-ADA Document 21 Filed 07/10/23 Page 16 of 20
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`F. App’x 882 (Fed. Cir. 2012), and rev’d on other grounds, 731 F.3d 1336 (Fed. Cir. 2013)
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`(citing Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252 (Fed. Cir. 2000)) (“To prove
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`that [defendant] directly infringed the system claims, plaintiff must show that [defendant] made,
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`used, sold, offered for sale, or imported the entire claimed system(s).”).
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`Here, Proxense’s Complaint is similar to the circumstances in CalAmp, where the Federal
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`Circuit held that the defendant could not directly infringe where it did not provide an essential
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`claim element. Omega Patents, LLC v. CalAmp Corp., 920 F.3d 1337, 1345 (Fed. Cir. 2019).
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`Just as the defendant in CalAmp did not provide the accused cell tower, Microsoft does not
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`provide the devices, applications, websites, and/or subscriptions that Proxense identifies for the
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`alleged infringement. Id. Similarly, a case dismissed by this Court involved “[a] system for
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`selecting streaming image content output by a camera from at least one mobile content
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`provider.” De La Vega v. Microsoft Corp., No. W-19-CV-00612-ADA, 2020 WL 3528411, at
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`*2 (W.D. Tex. Feb. 7, 2020). The plaintiff in De La Vega accused applications provided by
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`Microsoft, specifically Microsoft Mixer and its companion Microsoft Mixer Create App. Id.
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`However, the asserted claim “require[d] at last three actors” to infringe, and the plaintiff failed to
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`plead that the actions of these three actors were attributable to the defendants as it failed to
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`“allege or explain how Microsoft and Google are liable for joint infringement with a any third
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`parties.” Id. at *7. The Court found this to be fatal to the plaintiff’s claims, which were
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`dismissed with prejudice. Id.
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`Moreover, Proxense does not—and cannot plausibly—a