Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 1 of 8 PageID #: 273
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Plaintiff,
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`v.
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`Civil Action
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`No. 2:21-cv-00040-JRG (Lead Case)
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`Judge Rodney Gilstrap
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`Electronically Filed
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`Civil Action
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`No. 2:21-cv-00041-JRG (Member Case)
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`Judge Rodney Gilstrap
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`GESTURE TECHNOLOGY PARTNERS,
`LLC,
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`HUAWEI DEVICE CO., LTD., and
`HUAWEI DEVICE USA, INC.,
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`GESTURE TECHNOLOGY PARTNERS,
`LLC,
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`SAMSUNG ELECTRONICS CO., LTD.
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Defendants.
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`Plaintiff,
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`v.
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`Defendants.
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`DEFENDANTS HUAWEI DEVICE CO., LTD AND
`HUAWEI DEVICE USA, INC.’S PARTIAL MOTION TO DISMISS
`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`INTRODUCTION AND STATEMENT OF ISSUES
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`I.
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`Defendants, Huawei Device Co., Ltd. (“Huawei Device”) and Huawei Device USA, Inc.
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`(collectively “Huawei”), respectfully request dismissal of Gesture Technology Partners, LLC’s
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`(“GTP”) claims of induced infringement and willful infringement as to each asserted patent. It is
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`well established that both induced infringement and willful infringement require knowledge of the
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`patent. Here, GTP pleads that Huawei gained knowledge of each asserted patent through the filing
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`Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 2 of 8 PageID #: 274
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`No. 2:21-cv-00040-JRG (Lead Case)
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`of the Complaint. However, at the time the Complaint was filed, each asserted patent had already
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`expired. Thus, even taking GTP’s allegations as true, Huawei could not possess the knowledge
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`required to induce infringement or willfully infringe any of the asserted patents, and the allegations
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`of induced infringement and willfulness should be dismissed.
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`II.
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`FACTUAL BACKGROUND
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`GTP filed its Complaint against Huawei on February 4, 2021. Dkt. 1. The Complaint
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`alleges infringement of four patents – U.S. Patent Nos. 8,194,924 (“the ’924 Patent”); 7,933,431
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`(“the ’431 Patent”); 8,878,949 (“the ’949 Patent”); and 8,553,079 (“the ’079 Patent”) (collectively,
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`“the Asserted Patents”). Dkt. 1 at ¶¶ 18, 27-87. Copies of each patent were purportedly attached
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`as Exhibits A-D, respectively, to the Complaint. Id. at ¶ 28, 44, 59, 74. However, Exhibit D is a
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`different, unrelated patent – U.S. Patent No. 8,533,079. A copy of the ’079 Patent is attached as
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`Exhibit A to this Motion.
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`GTP alleges that Huawei has directly infringed at least one claim of each Asserted Patent
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`by making, using, selling, offering for sale, and importing a litany of “Accused Products.” Dkt. 1
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`at ¶ 21 (identifying Accused Products), ¶ 32 (’924 Patent), ¶ 46 (’431 Patent), ¶ 62 (’949 Patent),
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`¶ 77 (’079 Patent). GTP also asserts, for each Asserted Patent, that Huawei induced infringement
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`by encouraging end users and other third parties to directly infringe, and that Huawei’s
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`infringement was “willful.” Id. at ¶ 42 (’924 Patent), ¶ 57 (’431 Patent), ¶ 72 (’949 Patent), ¶ 86
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`(’079 Patent). In support of each such claim, GTP pleads the identical averment that “Huawei had
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`knowledge of the [ ] patent at least as of the filing of this Complaint.” Id. at ¶ 41 (’924 Patent), ¶
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`56 (’431 Patent), ¶ 71 (’949 Patent), ¶ 85 (’079 Patent).
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`All of the Asserted Patents expired well before the Complaint was filed on February 4,
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`2021. Where a patent includes a specific reference to an earlier filed application under 35 U.S.C.
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`2
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`Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 3 of 8 PageID #: 275
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`No. 2:21-cv-00040-JRG (Lead Case)
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`§§ 120, 121, 365(c), or 386(c), the term of the patent extends 20 years from the date on which the
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`earliest such application was filed. See 35 U.S.C. § 154(a)(2). Each Asserted Patent, as noted on
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`its face, includes a specific reference to earlier applications. As such, the expiration date of each
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`Asserted Patent is as follows:
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`• The ’924 Patent – expired July 7, 2020 (20 years from the filing of U.S. Patent
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`Application No. 09/612,225 on July 7, 2000; see ’924 Patent at cover (63));
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`• The ’431 Patent – expired July 7, 2020 (20 years from the filing of U.S. Patent
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`Application No. 09/612,225 on July 7, 2000; see ’431 Patent at cover (63));
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`• The ’949 Patent – expired May 11, 2020 (20 years from the filing of U.S. Patent
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`Application No. 09/568,552 on May 11, 2000; see ’949 Patent at cover (63)); and
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`• The ’079 Patent – expired November 3, 1999 (20 years from the filing of U.S.
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`Patent Application No. 09/433,297 on November 3, 1999; see ’079 Patent at cover
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`(63)).
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`III. LEGAL STANDARDS
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`A. Motions to Dismiss under Fed. R. Civ. P. 12(b)(6)
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`By written motion, a party may move to dismiss a complaint for “failure to state a claim
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`upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). Motions to dismiss are purely
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`procedural questions to which the Federal Circuit applies the law of the regional circuit. CoreBrace
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`LLC v. Star Seismic LLC, 566 F.3d 1069, 1072 (Fed. Cir. 2009).
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`A motion to dismiss should be granted if a complaint does not contain “sufficient factual
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`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.”’ Ashcroft v. Iqbal,
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`556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). In other
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`words, well-pleaded factual allegations must “raise a right to relief above the speculative level.”
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`Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 4 of 8 PageID #: 276
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`No. 2:21-cv-00040-JRG (Lead Case)
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`Cevallos v. Silva, 541 F. App’x. 390, 392 (5th Cir. 2013) (citing Twombly, 550 U.S. at 555).
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`Further, leave to amend should be denied if the claim is futile. Wiggins v. Louisiana State Univ.-
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`Health Care Servs. Div., 710 F. App’x 625, 627 (5th Cir. 2017).
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`B.
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`Induced Infringement
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`Induced infringement requires a defendant to have knowledge of the infringement prior to
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`the patent’s expiration. See In re Bill of Lading Transmission and Processing System Patent Litig.,
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`681 F.3d 1323, 1339 (Fed. Cir. 2012) (To survive a motion to dismiss an induced infringement
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`claim, plaintiff must allege “facts plausibly showing that [the defendant] specifically intended their
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`customers to infringe the [patent at issue] and knew that the customer’s acts constituted
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`infringement.”); Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 639 (2015) (“liability for
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`inducing infringement attaches only if the defendant knew of the patent and that ‘the induced acts
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`constitute patent infringement.’”). An induced infringement claim cannot stand absent an
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`allegation that defendant had the requisite knowledge “during the time the [ ] Patent was in force.”
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`See Babbage Holdings, LLC v. Activision Blizzard, Inc., No. 2:13-CV-750, 2014 WL 2115616, at
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`*1-2 (E.D. Tex. May 15, 2014) (dismissing induced infringement claim where knowledge was
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`based on the filing of the complaint and the patent expired a few days after the complaint was
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`filed).
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`C.
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` Willful Infringement
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`Similar to inducement, willful infringement requires plausibly alleging that the
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`infringement was “intentional or knowing.” See Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct.
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`1923, 1930-33 (2016) (a plaintiff must allege facts plausibly demonstrating the infringement was
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`“either known or so obvious that it should have been known to the accused infringer.”). At a
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`minimum, this requires plausible factual allegations that Defendant knew of the patent and its
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`Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 5 of 8 PageID #: 277
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`No. 2:21-cv-00040-JRG (Lead Case)
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`alleged infringement “prior to the patent’s expiration.” Clinicomp Int’l, Inc. v. Cerner Corp., No.
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`17cv2479-GPC(BLM), 2018 WL 2229364, at *2 (S.D. Cal. May 16, 2018); WBIP, LLC v. Kohler
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`Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016) (knowledge of patent a prerequisite for enhanced
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`damages).
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`IV. ARGUMENT
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`GTP’s inducement and willfulness claims must be dismissed because it has not pleaded
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`facts that plausibly establish Huawei’s knowledge of the Asserted Patents prior to their expiration.
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`Both induced and willful infringement require, at a minimum, knowledge of the patent. See Bill
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`of Lading, 681 F.3d at 1339; Halo, 136 S. Ct. at 1930-33. GTP’s sole allegation with respect to
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`Huawei’s knowledge of the Asserted Patents is that “Huawei had knowledge of the [ ] patent at
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`least as of the filing of this Complaint.” Dkt. 1 at ¶ 41 (’924 Patent), ¶ 56 (’431 Patent), ¶ 71 (’949
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`Patent), ¶ 85 (’079 Patent). However, all of the Asserted Patents had already expired as of the
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`filing of the Complaint. See Section II, supra. Indeed, the ’079 Patent had been expired for over
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`a year while the other Asserted Patents had been expired for at least six months. Id.
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`The facts of this case are nearly identical to those in Babbage, in which this Court dismissed
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`an indirect infringement claim with prejudice. In Babbage, the plaintiff alleged that defendant
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`knew of the asserted patent “at least as early as the filing of the original complaint.” Babbage,
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`2014 WL 2115616, at *1-2. The complaint was filed only a few days before the patent expired
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`and defendant was not served until after expiration. Id. at *2. Under these circumstances, this
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`Court dismissed the indirect infringement claims with prejudice, noting that “Babbage’s indirect
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`infringement claims must fail for the lack of any plausible allegation of Defendants’ actual
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`knowledge of the [asserted] Patent while it was still in force.” Id. The Court found Babbage’s
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`continued effort to enforce indirect infringement claims on expired patents so concerning that it
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`Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 6 of 8 PageID #: 278
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`No. 2:21-cv-00040-JRG (Lead Case)
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`ordered Babbage to show cause why sanctions should not be imposed. Id. (“The circumstances
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`surrounding this motion raise, in the Court’s view, a real and legitimate concern that Babbage may
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`have violated such duties [that its assertions are warranted by existing law].”).
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`Here, like in Babbage, GTP asserts that Huawei has been on notice of the Asserted Patents
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`“at least as of the filing of this Complaint.” Dkt. 1 at ¶ 41 (’924 Patent), ¶ 56 (’431 Patent), ¶ 71
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`(’949 Patent), ¶ 85 (’079 Patent). GTP has not alleged any facts that plausibly support pre-suit
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`knowledge or notice of the Asserted Patents. See generally Dkt. 1. And, because the Asserted
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`Patents all expired before the filing of the Complaint, no factual allegations can support post-suit
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`inducement or willful infringement.
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`If anything, the present case presents an even more compelling reason to dismiss the
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`inducement and willfulness claims than in Baggage. Whereas, in Baggage, the complaint was
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`filed a few days before expiration of the patent, here the Asserted Patents all expired at least six
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`months before the Complaint was filed. Even assuming Huawei learned of the Complaint and the
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`allegations against it on the day the Complaint was filed, as GTP alleges, this would not satisfy
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`the knowledge requirement for inducement or willfulness as the Asserted Patents had already
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`expired. Thus, like in Babbage, the Court should dismiss GTP’s claims of induced infringement
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`and willfulness with prejudice.
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`V.
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`CONCLUSION
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`For the foregoing reasons, the allegations of induced infringement and willful infringement
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`as to each Asserted Patent should be dismissed with prejudice.
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`Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 7 of 8 PageID #: 279
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`Dated: May 6, 2021
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`No. 2:21-cv-00040-JRG (Lead Case)
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`Respectfully submitted,
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` By: /s/ J. Mark Mann
`J. Mark Mann
`State Bar No. 12926150
`mark@themannfirm.com
`G. Blake Thompson
`State Bar No. 24042033
`blake@themannfirm.com
`MANN TINDEL & THOMPSON
`201 E. Howard Street
`903.657.8540
`903.657.6003 (fax)
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` AND
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`Kent E. Baldauf, Jr. (PA ID No. 70793)
`Bryan P. Clark (PA ID No. 205708)
`THE WEBB LAW FIRM
`One Gateway Center
`420 Ft. Duquesne Blvd., Suite 1200
`Pittsburgh, PA 15222
`412.471.8815
`412.471.4094 (fax)
`kbaldaufjr@webblaw.com
`bclark@webblaw.com
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`Attorneys for Defendants
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`7
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`Case 2:21-cv-00040-JRG Document 28 Filed 05/06/21 Page 8 of 8 PageID #: 280
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 6th day of May, 2021, I electronically filed the foregoing
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`DEFENDANTS HUAWEI DEVICE CO., LTD AND HUAWEI DEVICE USA, INC.’S
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`PARTIAL MOTION TO DISMISS PLAINTIFF’S ORIGINAL COMPLAINT FOR
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`PATENT INFRINGEMENT with the Clerk of Court using the CM/ECF system which sent
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`notification to all counsel of record.
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` /s/ J. Mark Mann
` J. Mark Mann
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