Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 1 of 16 PageID #: 1035
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`NORTHSTAR SYSTEMS LLC,
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`
`Plaintiff,
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`
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`v.
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`VOLKSWAGEN AG,
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`Defendant.
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`
`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
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`
`
`
`
`Case No. 2:22-cv-00486-JRG (Lead Case)
`
`JURY TRIAL DEMANDED
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`
`
`
`
`Case No. 2:22-cv-00496-JRG (Member Case)
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`JURY TRIAL DEMANDED
`
`v.
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`BAYERISCHE MOTOREN WERKE AG,
`
`
`Defendant.
`
`
`
`PLAINTIFF NORTHSTAR SYSTEMS LLC’S RESPONSE IN
`OPPOSITION TO DEFENDANT BAYERISCHE MOTOREN
`WERKE AG’S MOTION TO DISMISS
`PURSUANT TO RULE 12(b)(6) (DKT. 80)
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`

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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 2 of 16 PageID #: 1036
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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`RESPONSE TO STATEMENT OF ISSUES TO BE DECIDED ...................................... 1
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`INTRODUCTION .............................................................................................................. 1
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`BACKGROUND ................................................................................................................ 2
`A.
`Procedural Background ........................................................................................... 2
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`LEGAL STANDARDS ...................................................................................................... 4
`A.
`Failure to State a Claim Pursuant to Rule 12(b)(6)................................................. 4
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`ARGUMENT ...................................................................................................................... 5
`A.
`NorthStar Sufficiently Pleads Direct and Indirect Infringement in
`the Amended Complaint. ........................................................................................ 5
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`CONCLUSION ................................................................................................................. 10
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`
`i
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 3 of 16 PageID #: 1037
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`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Cases
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................5
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...............................................................................................................4, 5
`
`In re Bill of Lading Transmission & Processing Sys. Pat. Litig.,
`681 F.3d 1323 (Fed. Cir. 2012)..............................................................................................4, 5
`
`BMW of N. Am., LLC v. NorthStar Sys. LLC,
`No. 6:23-cv-00456 (W.D. Tex. Jun. 16, 2023), Dkt 1 ...........................................................3, 7
`
`Chapterhouse, LLC v. Shopify, Inc.,
`No. 2:18-cv-00300-JRG, 2018 WL 6981828 (E.D. Tex. Dec. 11, 2018) ..........................1, 8, 9
`
`CXT Sys., Inc. v. Acad., Ltd.,
`No. 2:18-CV-00171-RWS-RSP, 2019 WL 1858301 (E.D. Tex. Mar. 11, 2019) ......................8
`
`Estech Sys., Inc. v. Target Corp.,
`No. 2:20-CV-00123-JRG-RSP, 2020 WL 6496425 (E.D. Tex. Aug. 10, 2020) .......................9
`
`Fractus, S.A. v. TCL Corp.,
`No. 2:20-CV-00097-JRG, 2021 WL 2483155 (E.D. Tex. June 2, 2021) ..................................9
`
`Lormand v. US Unwired, Inc.,
`565 F.3d 228 (5th Cir. 2009) .................................................................................................4, 5
`
`Motiva Pats., LLC v. Sony Corp.,
`No. 9:18-CV-00180-JRG-KFG, 2019 WL 4737051 (E.D. Tex. Sept. 27, 2019) ......................5
`
`O’Daniel v. Indus. Serv. Sols.,
`922 F.3d 299 (5th Cir. 2019) .....................................................................................................4
`
`Panoptis Pat. Mgmt., LLC v. Blackberry Corp.,
`No. 2:16-CV-00059-JRG-RSP, 2017 WL 780885 (E.D. Tex. Feb. 10, 2017) ....................9, 10
`
`Pat. Harbor, LLC v. DreamWorks Animation SKG, Inc.,
`No. 6:11-cv-220, 2012 WL 9864381 (E.D. Tex. July 27, 2012) ...............................................5
`
`Realtime Data, LLC v. Morgan Stanley,
`721 F. Supp. 2d 538 (E.D. Tex. Jun. 10, 2010) .......................................................................10
`
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`
`ii
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`Script Sec. Sols. L.L.C. v. Amazon.com, Inc.,
`170 F. Supp. 3d 928 (E.D. Tex. 2016) .......................................................................................4
`
`Other Authorities
`
`Federal Rules of Civil Procedure 12(b)(6).........................................................................1, 4, 5, 11
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`iii
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 5 of 16 PageID #: 1039
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`Plaintiff NorthStar Systems LLC (“NorthStar” or “Plaintiff”) files this response in
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`opposition to Defendant Bayerische Motoren Werke AG’s (“BMW” or “Defendant”) motion to
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`dismiss pursuant to Federal Rules of Civil Procedure 12(b)(6) (Dkt. 80 or the “Motion”). The
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`Motion should be denied as to both sets of relief requested. NorthStar has sufficiently pled
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`infringement of the Patents-in-Suit in the Amended Complaint. Moreover, NorthStar specifically
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`cured deficiencies in the Original Complaint noted in the Court’s Memorandum Opinion and Order
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`dismissing the Original Complaint, in part. For these reasons, which are set forth below in greater
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`detail, the Motion should be denied.
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`I.
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`RESPONSE TO STATEMENT OF ISSUES TO BE DECIDED
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`1.
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`NorthStar’s Amended Complaint against BMW should not be dismissed pursuant
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`to Rule 12(b)(6) because NorthStar has sufficiently pled facts to maintain an action for
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`infringement of the Patents-in-Suit for all claim terms.
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`2.
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`NorthStar does not need to amend its complaint again because the Amended
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`Complaint sufficiently addresses the deficiencies noted in the Court’s Memorandum Opinion and
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`Order dismissing the Original Complaint, in part.
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`II.
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`INTRODUCTION
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`The Motion should be denied in its entirety because NorthStar addressed and cured every
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`deficiency raised by the Court in the Opinion.
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`The Motion is nothing more than BMW trying to get a second bite at the apple by imposing
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`BMW’s overly expansive reading of cases like Chapterhouse, LLC v. Shopify, Inc., No. 2:18-cv-
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`00300-JRG, 2018 WL 6981828 (E.D. Tex. Dec. 11, 2018) which would create a heightened
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`pleading standard for a large majority of patent litigations involving software.
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`BMW also attempts to convince the Court that the Amended Complaint fails to sufficiently
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 6 of 16 PageID #: 1040
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`identify an infringing system, while BMW’s subsidiary, BMW of North America, LLC, is
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`simultaneously maintaining a declaratory judgement action in the Western District of Texas,
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`specifically seeking a declaration that the iDrive infotainment system does not infringe the
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`Patents-in-Suit. The Court should not permit BMW to speak out of both sides of its mouth,
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`claiming to lack notice of the infringing system in this Court, while explicitly identifying the
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`infringing system in another, co-pending action. BMW further attempts to distort the timeline of
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`this litigation by claiming NorthStar has not been able to identify an infringing system for nine
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`months. The iDrive infotainment system, of which BMW is clearly aware, was included in the
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`Original Complaint. BMW identified the iDrive infotainment system in the original complaint for
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`declaratory judgement in the Western District, which was filed three days before the motion to
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`dismiss the Original Complaint. BMW has clearly been on notice of the infringing system since
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`the beginning of this action, and it should not be permitted to claim lack of notice or insufficient
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`pleadings in the Original Complaint or the Amended Complaint.
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`For these reasons, which will be expounded upon infra, the Motion should be denied in its
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`entirety.
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`III. BACKGROUND
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`A.
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`Procedural Background
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`a. Eastern District of Texas Litigation
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`NorthStar filed its Original Complaint in this matter on December 27, 2022, alleging
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`infringement of U.S. Patent Nos. 6,898,432 (the “’432 Patent”), 8,014,943 (the “’943 Patent”),
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`8,032,297 (the “’297 Patent”), 8,478,527 (the “527 Patent”), and 8,805,416 (the “416 Patent”)
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`(collectively, the “Patents-in-Suit”) (the “Eastern District of Texas Litigation”). See Dkt. 1 (Case
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`2
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 7 of 16 PageID #: 1041
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`No. 2:22-cv-00496-JRG (Member Case)) (the “Original Complaint”).1 On June 19, 2023, BMW
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`filed a motion to dismiss the Original Complaint. See Dkt. 26 (the “Original Motion to Dismiss”)
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`(Case No. 2:22-cv-00486-JRG (Lead Case)). On September 5, 2023, the Court entered a
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`Memorandum Opinion and Order, granting the Original Motion to Dismiss, in part. See Dkt. 71
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`(the “Opinion”). Thereafter, on September 19, 2023, NorthStar filed an Amended Complaint,
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`curing the deficiencies of the Original Complaint noted in the Opinion. See Dkt. 74 (the “Amended
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`Complaint”). In response, on October 18, 2023, BMW filed the Motion, seeking, again, to dismiss
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`the Eastern District of Texas Litigation. See Dkt. 80.
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`b. Western District of Texas Litigation
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`On June 16, 2023, BMW of North America, LLC, (“BMW NA”) filed a Declaratory
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`Judgment action against NorthStar in the Western District of Texas (the “Western District of Texas
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`Litigation”). See BMW of N. Am., LLC v. NorthStar Sys. LLC, No. 6:23-cv-00456 (W.D. Tex. Jun.
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`16, 2023), Dkt 1 (the “Original Declaratory Judgement Complaint”). On September 14, 2023,
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`NorthStar filed a motion to dismiss the Original Declaratory Judgement Complaint. See id. at Dkt.
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`9. Rather than oppose the motion to dismiss, BMW NA filed an amended complaint for
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`declaratory judgement on October 5, 2023 (the “Amended Complaint for Declaratory
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`Judgement”). In response, NorthStar again moved to dismiss the Western District of Texas
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`litigation on October 10, 2023. See id. at Dkt. 11.
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`1 Hereinafter, any citation to “Dkt. 1” means the Original Complaint filed in the member case:
`Case No. 2:22-cv-00496-JRG (Member Case).
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`3
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`IV.
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`LEGAL STANDARDS
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`A.
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`Failure to State a Claim Pursuant to Rule 12(b)(6)
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`The question on a Rule 12(b)(6) motion to dismiss is not whether the plaintiff will prevail
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`on its claims, “but whether [the] complaint was sufficient to cross the federal court’s threshold.”
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`Script Sec. Sols. L.L.C. v. Amazon.com, Inc., 170 F. Supp. 3d 928, 935 (E.D. Tex. 2016) (citing
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`Skinner v. Switzer, 562 U.S. 521, 530 (2011)). The Court must “accept all well-pleaded facts in
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`the complaint as true and view the facts in the light most favorable to the plaintiff.” O’Daniel v.
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`Indus. Serv. Sols., 922 F.3d 299, 304 (5th Cir. 2019) (citation omitted). After viewing the facts
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`most favorably to the plaintiff, “the court must then decide whether those facts state a claim for
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`relief that is plausible on its face.” Script, 170 F. Supp. 3d at 935 (citation omitted). The
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`plausibility standard “simply calls for enough fact to raise a reasonable expectation that discovery
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`will reveal evidence of [the claim].” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 545 (2007); accord
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`id. at 559, (explaining that claims should only be dismissed at the pleading stage when there is “no
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`‘reasonably founded hope that the [discovery] process will reveal relevant evidence’” (quoting
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`Dura Pharms., Inc. v. Broudo, 544 U.S. 336, 347 (2005))); In re Bill of Lading Transmission &
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`Processing Sys. Pat. Litig., 681 F.3d 1323, 1341 (Fed. Cir. 2012) (“As the Supreme Court has
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`explained, the plausibility requirement is not akin to a ‘probability requirement at the pleading
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`stage; it simply calls for enough fact[s] to raise a reasonable expectation that discovery will reveal’
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`that the defendant is liable for the misconduct alleged.” (quoting Twombly, 550 U.S. at 556)).
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`Courts “are not authorized or required to determine whether the plaintiff’s plausible inference . . .
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`is equally or more plausible than other competing inferences.” Lormand v. US Unwired, Inc., 565
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`F.3d 228, 267 (5th Cir. 2009) (citing Twombly, 550 U.S. at 556). “[W]here the relevant
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`information is beyond the access of the plaintiff, courts should generally permit discovery to
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 9 of 16 PageID #: 1043
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`proceed unless the complaint recites no more than sheer speculation about the plaintiff’s
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`entitlement to relief.” Motiva Pats., LLC v. Sony Corp., No. 9:18-CV-00180-JRG-KFG, 2019 WL
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`4737051, at *4 (E.D. Tex. Sept. 27, 2019) (citing Wooten v. McDonald Transit Assocs., Inc., 788
`
`F.3d 490, 498 (5th Cir. 2015)); Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009)).
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`
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`A motion to dismiss under Rule 12(b)(6) raises purely procedural questions that are
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`governed by the law of the regional circuit. In re Bill of Lading, 681 F.3d at 1331 (citing McZeal
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`v. Sprint Nextel Corp., 501 F.3d 1354, 1355-56 (Fed. Cir. 2007)). In the Fifth Circuit, motions to
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`dismiss “are viewed with disfavor and are rarely granted.” Lormand, 565 F.3d at 232 (citation
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`omitted). To survive a motion to dismiss on a claim for indirect (induced) infringement, a
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`complaint must “contain facts plausibly showing that [an accused infringer] specifically intended
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`their customers to infringe the [patent or patents-in-suit] and knew that the customers’ acts
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`constituted infringement.” In re Bill of Lading, 681 F.3d at 1339. However, a plaintiff “need not
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`prove its inducement case at the time of filing, nor must it provide detailed factual support for
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`every element of inducement.” Pat. Harbor, LLC v. DreamWorks Animation SKG, Inc., No. 6:11-
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`cv-220, 2012 WL 9864381, at *5 (E.D. Tex. July 27, 2012); see also, Twombly, 550 U.S. at 556
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`(“[A] well-pleaded complaint may proceed even if it strikes a savvy judge that actual proof of
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`those facts is improbable, and that a recovery is very remote and unlikely.” (internal quotation
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`marks and citation omitted)).
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`V.
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`ARGUMENT
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`A.
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`NorthStar Sufficiently Pleads Direct and Indirect Infringement in the
`Amended Complaint.
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`The Amended Complaint sufficiently pleads direct and indirect infringement, and it cured
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`the deficiencies noted in the Opinion. As to direct infringement, the Court found in the Opinion
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`that the Original Complaint was deficient because it did “not allege how BMW uses the inventions
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 10 of 16 PageID #: 1044
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`claimed in the Patents-in-Suit.” Dkt. 71 at 5 (emphasis in original). The Opinion further found
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`that, if NorthStar’s allegations that “BMW uses the Patents-in-Suit by testing and troubleshooting
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`the accused features in the United States […]” were in the Original Complaint, the deficiency
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`would be cured. Id. This is the only deficiency the Court required NorthStar to address regarding
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`direct infringement, and NorthStar cured the deficiency by pleading in the Amended Complaint
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`that “BMW employees regularly travel to the United States to test and/or troubleshoot the Accused
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`Products,” thereby directly infringing the Patents-in-Suit. See Dkt. 74 ¶¶ 26, 38, 52, 63, 73.
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`BMW notes in the Motion that the Opinion states the allegations in the Original Complaint
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`are “thin”. Importantly, however, and ignored by BMW, the Court ultimately found:
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`Nonetheless, the Court finds that NorthStar has largely identified the
`accused products with sufficient specificity. Alleging that the
`“BMW Navigation System” is infringing is sufficient to put BMW
`on notice of the class of products that may be infringing. BMW does
`not allege that there are a large number of various unnamed products
`that may be infringing. Dkt. 71 at 5.]
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`NorthStar’s allegations of direct infringement in the Amended Complaint are, therefore, sufficient
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`pursuant to the findings in the Opinion. Any attempt by BMW to claim otherwise flies in the face
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`of the Court’s clear instructions in the Opinion and should be ignored.
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`
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`In a bald workaround to the Court’s clear directive, BMW now claims that the Amended
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`Complaint’s use of the term “BMW’s Navigation System” is a “generic term with no bounds to
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`the number or names of products it captures.” See Motion at 5. BMW asserts, for the first time,
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`that Patents-in-Suit could apply to numerous systems, “including systems external to the vehicles
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`such as cellphones and third-party operating systems and functionality (e.g., Apple® iOS, Apple®
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`Maps, Android™ platform, Google Maps™, etc.).” Id. 5-6. BMW raises this argument now to
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`contradict the Court’s reasoning in the Opinion for refusing to dismiss the Original Complaint.
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`See Dkt. 71 at 5 (the Court finding that “BMW does not allege that there are a large number of
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 11 of 16 PageID #: 1045
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`various unnamed products that may be infringing.”).
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`This argument necessarily fails for three reasons. First, the Court already held in the
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`Opinion that “[a]lleging that the ‘BMW Navigation System’ is infringing is sufficient to put BMW
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`on notice of the class of products that may be infringing.” Id. BMW claiming in a second motion
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`to dismiss that there are numerous unnamed systems involved in nothing but a ploy to get around
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`the Court’s holding in the Opinion, rather than a meritorious argument. Second, neither the
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`Original Complaint nor the Amended Complaint are limited to the BMW Navigation System. Both
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`the Original Complaint and the Amended Complaint specifically allege that the BMW iDrive
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`infotainment system, which is implemented in the BMW Navigation System, infringes the Patents-
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`in-Suit. See Case 2:22-cv-496-JRG-RSP, Dkt. 1 ¶¶ 13-15, 20-22, 32-34, 44-46, 57-58, and 66-67;
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`see also Case 2:22-cv-486-JRG-RSP, Dkt. 74 ¶¶ 13-15, 20-22, 33-35, 46-48, 60-61, and 70-71.
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`NorthStar, therefore, specifically identified a BMW system that infringes the Patents-in-Suit,
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`contrary to BMW’s claims.
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`Lastly, BMW’s subsidiary, BMW NA, has explicitly recognized in the Western District
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`Litigation that BMW was on notice of NorthStar’s infringement allegations by seeking a
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`declaration that “iDrive infotainment system” does not infringe the Patents-in-Suit. In both the
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`Original Declaratory Judgement Complaint and the Amended Declaratory Judgement Complaint,
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`BMW NA requests that the court in the Western District of Texas declare that the BMW vehicles
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`which incorporate the iDrive infotainment system “do[] not infringe and [have] not infringed,
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`directly or indirectly, any claim of the [Patents-in-Suit], either literally or under the doctrine of the
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`equivalents.” See Case No. 6:23-cv-456-ADA, Dkt. No. 1 ¶¶ 30, 36, 42, 48, 54; see also Dkt. 10
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`¶¶ 38, 45, 52, 59, 66. Importantly, the Original Declaratory Judgement Complaint was filed on
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`June 16, 2023, three days before BMW filed the Original Motion to Dismiss on June 19, 2023.
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`7
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 12 of 16 PageID #: 1046
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`BMW NA seeking a declaration that the iDrive infotainment system does not infringe the Patents-
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`in-Suit in the Western District of Texas Litigation clearly and unequivocally demonstrates that
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`BMW was aware of a system NorthStar alleged to infringe the Patents-in-Suit based upon to
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`Original Complaint. Therefore, BMW should not be permitted to claim it does not have sufficient
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`notice of the alleged infringing systems based on the Original Complaint and the Amended
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`Complaint. Similarly, BMW cannot claim NorthStar has caused a “long delay” by failing to
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`identify infringing systems. See Motion at 13. NorthStar identified the iDrive infotainment system
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`in the Original Complaint, and BMW has known about this allegation since, at the latest, BMW
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`NA’s commencement of the Western District of Texas Litigation in June 2023, only two months
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`after BMW was served with the Summons and Complaint. See Case 2:22-cv-00496-JRG-RSP,
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`Dkt. No. 8 (noting the date of service on BMW as April 12, 2023).
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`BMW’s attempt to rely upon Chapterhouse, LLC v. Shopify, Inc., No. 2:18-CV-00300-JRG, 2018
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`WL 6981828 (E.D. Tex. Dec. 11, 2018) in establishing a heightened pleading standard for cases
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`involving software is untenable and, again, misplaced. There, the technology at issue involved
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`“the hardware and software involved in an electronic transaction receipt system that allows digital
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`receipts to be generated from information electronically read from the product and provides
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`additional purchase opportunities to customers.” Id. *2. The technology related to the Patents-in-
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`Suit is not comparable. NorthStar has demonstrated how the technology practices the methods of
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`the exemplary claim by specifically placing photographs after only certain claim limitations and
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`highlighting certain language in the photographs. In this way, NorthStar has sufficiently pled facts
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`to support a claim for direct infringement. See CXT Sys., Inc. v. Acad., Ltd., No. 2:18-CV-00171-
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`RWS-RSP, 2019 WL 1858301, at *3 (E.D. Tex. Mar. 11, 2019), report and recommendation
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`adopted, No. 2:18-CV-00171-RWS-RSP, 2019 WL 1795929 (E.D. Tex. Apr. 24, 2019) (finding
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`8
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`that where a complaint attaches the patent, identifies infringing products, and states that the
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`accused product[s] “satisfy each and every limitation of one or more claims” of a patent-in-suit,
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`infringement is sufficiently plead.) (citing Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d
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`1256 (Fed. Cir. 2018); see also Fractus, S.A. v. TCL Corp., No. 2:20-CV-00097-JRG, 2021 WL
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`2483155, at *2 (E.D. Tex. June 2, 2021) (taking into account that the “technology [] is less
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`complicated than the technology [in Chapterhouse]” in finding the Complaint sufficiently pled
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`facts to support claims for direct and indirect infringement.). BMW’s cherry-picking of certain
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`claim terms does not dispel the dissimilarities between the technology and patents at issue here
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`versus in Chapterhouse. Moreover, taken to its logical conclusion, BMW’s position would require
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`every patent infringement case involving software to carry a heightened pleading standard.
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`BMW’s motion is more inappropriate given the stage of the litigation. NorthStar served
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`its preliminary infringement contentions upon BMW on July 20, 2023 (see Dkt. 48), over three
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`months ago. To the extent BMW claims the Amended Complaint does not provide sufficient
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`notice, NorthStar’s preliminary infringement contentions certainly cure the alleged sufficiency.
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`See Panoptis Pat. Mgmt., LLC v. Blackberry Corp., No. 2:16-CV-00059-JRG-RSP, 2017 WL
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`780885, at *4 (E.D. Tex. Feb. 10, 2017), report and recommendation adopted, No. 2:16-CV-
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`00059-JRG-RSP, 2017 WL 780880 (E.D. Tex. Feb. 28, 2017) (“Given the typical result, it is not
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`clear why BlackBerry filed this motion to dismiss to test the sufficiency of PanOptis’s direct
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`infringement claims. It cannot be because BlackBerry does not have sufficient notice of PanOptis’s
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`claims because BlackBerry filed the motion to dismiss at least a month after BlackBerry received
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`PanOptis’s more detailed infringement contentions.”) (emphasis in original); Estech Sys., Inc. v.
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`Target Corp., No. 2:20-CV-00123-JRG-RSP, 2020 WL 6496425, at *3 (E.D. Tex. Aug. 10, 2020),
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`report and recommendation adopted, No. 2:20-CV-00123-JRG-RSP, 2021 WL 966016 (E.D. Tex.
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`9
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 14 of 16 PageID #: 1048
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`Mar. 12, 2021) (finding that “[t]o the extent [defendant] contends the complaint does not contain
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`enough details as to how it supposedly infringes, [plaintiff’s] infringement contentions provide
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`additional details.”). To the extent the Court still finds that the Amended Complaint fails to
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`sufficiently plead direct infringement, NorthStar should be afforded the opportunity to amend
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`pursuant to Rule 15(a)(2), where it could simply append its preliminary infringement contentions
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`to the Amended Complaint. However, as this Court has previously found, this should be
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`unnecessary at this stage. See Panoptis Pat. Mgmt., LLC, 2017 WL 780885, at *4 (finding that in
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`most cases where the sufficiency of a complaint is challenged, “the result will be a command to
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`the Plaintiff to amend. If that command comes after the plaintiff has served infringement
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`contentions, a defendant gains nothing beyond whatever nuisance the motion creates for the
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`plaintiff.”).
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`Accordingly, NorthStar cured the deficiencies noted in the Court’s Opinion and sufficiently
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`pleads direct infringement in the Amended Complaint. Therefore, the Motion should be denied.2
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`VI. CONCLUSION
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`For the foregoing reasons, Plaintiff respectfully requests that the Court deny Defendant’s
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`Motion to Dismiss pursuant to Rule 12(b)(6).
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`2 The Motion only makes a passing mention of NorthStar’s allegations of indirect infringement.
`BMW cites to Realtime Data, LLC v. Morgan Stanley, 721 F. Supp. 2d 538, 544 (E.D. Tex. Jun.
`10, 2010) for the proposition that because NorthStar’s direct infringement allegations allegedly
`fail, so too must its indirect infringement allegations. See Motion at 7. This is not the case. The
`Court in Realtime Data dismissed plaintiff’s claims for indirect infringement because the amended
`complaint there failed to identify “which other party committed the underlying act of
`infringement.” Realtime Data, 721 F. Supp. 2d at 544. BMW does not address NorthStar’s
`allegations regarding indirect infringement through the direct infringement of its customers and
`end-users. BMW has therefore waived its right to challenge the sufficiency of NorthStar’s
`allegations of indirect infringement.
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`10
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 15 of 16 PageID #: 1049
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`Dated: November 1, 2023
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`Respectfully submitted,
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`/s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, NY 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`John Andrew Rubino
`NY Bar No. 5020797
`Email: jarubino@rubinoip.com
`Michael Mondelli III
`NY Bar No. 5805114
`Email: mmondelli@rubinoip.com
`RUBINO IP
`51 J.F.K. Parkway
`Short Hills, NJ, 07078
`Telephone: (201) 341-9445
`Facsimile: (973) 535-0921
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`Justin Kurt Truelove
`Texas Bar No. 24013653
`Email: kurt@truelovelawfirm.com
`TRUELOVE LAW FIRM, PLLC
`100 West Houston
`Marshall, Texas 75670
`Telephone: (903) 938-8321
`Facsimile: (903) 215-8510
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`ATTORNEYS FOR PLAINTIFF,
`NORTHSTAR SYSTEMS LLC
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`11
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`Case 2:22-cv-00486-JRG Document 81 Filed 11/01/23 Page 16 of 16 PageID #: 1050
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on November 1, 2023, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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