Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 1 of 14 PageID #: 1051
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
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`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
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`Case No. 2:22-cv-00486-JRG (Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`Case No. 2:22-cv-00496-JRG (Member Case)
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`JURY TRIAL DEMANDED
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`Oral Argument Requested
`
`
`
`
`v.
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`VOLKSWAGEN AG,
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`Defendant.
`
`
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`NORTHSTAR SYSTEMS LLC,
`
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`Plaintiff,
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`v.
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`
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`BAYERISCHE MOTOREN WERKE AG,
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`Defendant.
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`DEFENDANT BAYERISCHE MOTOREN WERKE AG’S
`REPLY BRIEF IN SUPPORT OF ITS MOTION TO DISMISS PLAINTIFF’S
`AMENDED COMPLAINT PURSUANT TO RULE 12(b)(6)
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`

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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 2 of 14 PageID #: 1052
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`TABLE OF CONTENTS
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`INTRODUCTION – NORTHSTAR’S AMENDED COMPLAINT REMAINS
`DEFICIENT FOR FAILURE TO STATE A CLAIM .........................................................1
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`Page
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`ARGUMENT – NORTHSTAR’S OPPOSITION DOES NOT JUSTIFY ITS
`FAILURE TO CURE THE DEFICIENCIES IN ITS COMPLAINT .................................2
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`I.
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`II.
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`III.
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`CONCLUSION ....................................................................................................................9
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`i
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 3 of 14 PageID #: 1053
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
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`Federal Cases
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................6
`
`Chapterhouse, LLC v. Shopify, Inc.,
`No. 2:18-CV-00300-JRG, 2018 WL 6981828 (E.D. Tex. Dec. 11, 2018) ........................4, 5, 6
`
`Chemetron Corp. v. Bus. Funds, Inc.,
`682 F.2d 1149 (5th Cir. 1982), vacated on other grounds, 460 U.S. 1007
`(1983) .........................................................................................................................................9
`
`Clear with Computers, LLC v. Bergdorf Goodman, Inc.,
`No. 6:09–cv–481, slip op. (E.D. Tex. Mar. 29, 2010) ...............................................................8
`
`Disc Disease Sols. Inc. v. VGH Sols., Inc.,
`888 F.3d 1256 (Fed. Cir. 2018)..............................................................................................4, 5
`
`Fractus, S.A. v. TCL Corp.,
`No. 2:20-CV-00097-JRG, 2021 WL 2483155 (E.D. Tex. June 2, 2021) ..............................5, 6
`
`Lodsys Grp., LLC v. Brother Int'l Corp.,
`No. 2:11-CV-00090-JRG, 2013 WL 5353004 (E.D. Tex. Sept. 24, 2013) ...............................6
`
`Panoptis Pat. Mgmt., LLC v. Blackberry Corp.,
`No. 2:16-CV-00059-JRG-RSP, 2017 WL 780885 (E.D. Tex. Feb. 10, 2017) ..................6, 7, 8
`
`Realtime Data, LLC v. Morgan Stanley,
`721 F.Supp.2d 538 (E.D. Tex. Jun. 10, 2010) ...........................................................................8
`
`Semcon Ip Inc. v. Huawei Device USA Inc.,
`No. 2:16-cv-00437-JRG-RSP (E.D. Tex. Sept. 29, 2017) .........................................................9
`
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`ii
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 4 of 14 PageID #: 1054
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`TABLE OF EXHIBITS
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`Description
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`Appendix A of NorthStar’s Preliminary Infringement Contentions
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`Exhibit
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`2
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`iii
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 5 of 14 PageID #: 1055
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`I.
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`INTRODUCTION – NORTHSTAR’S AMENDED COMPLAINT REMAINS
`DEFICIENT FOR FAILURE TO STATE A CLAIM
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`The Court dismissed NorthStar’s original Complaint because it included only “thin” factual
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`allegations that do “little more than parrot the claim language.” See Dkt. 71 at 5. NorthStar’s
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`Amended Complaint fails to meaningfully supplement its allegations and its Opposition fails to
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`follow the clear directives of the Court. Accordingly, as NorthStar has failed two chances to submit
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`proper infringement allegations, the Amended Complaint should be dismissed with prejudice.
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`Unable to amend its Complaint meaningfully per the Court’s Order, NorthStar instead
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`relies on a mistaken assumption that the Court only identified one deficiency in its original
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`Complaint. But a plain reading of the Order itself quickly proves this wrong—the Court ordered
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`NorthStar to substantively amend its factual allegations, but NorthStar failed this task. Instead,
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`NorthStar made only a two-sentence change to its original Complaint, resulting in an Amended
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`Complaint that still does “little more than parrot the claim language.” Thus, while NorthStar
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`argues against a more detailed pleading standard for complicated technology, such as the
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`technology here, the case law (including the cases on which NorthStar relies) requires more details
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`than a bare bones allegation in the Amended Complaint. Conceding as much, NorthStar attempts
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`to rely on its preliminary infringement contentions, but they are (1) not part of the pleadings and
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`(2) also fail to rectify the deficiencies in the Amended Complaint, as they only cite to third-party
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`information unrelated to BMW AG and its products. NorthStar also improperly attempts to rely
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`on non-party BMW NA’s defensive declaratory judgment action in another district to shift its
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`burden of providing notice to defendants BMW AG about how its products allegedly infringe the
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`asserted patents, but BMW NA’s actions have nothing to do with NorthStar’s obligations to
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`provide sufficient pleadings.
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 6 of 14 PageID #: 1056
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`As NorthStar has squandered its opportunity to sufficiently amend its Complaint, instead
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`adding only two new sentences, this Court should dismiss NorthStar’s Amended Complaint with
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`prejudice. NorthStar should not be afforded yet another opportunity to amend its complaint and
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`further burden this Court and BMW AG.
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`II.
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`ARGUMENT – NORTHSTAR’S OPPOSITION DOES NOT JUSTIFY ITS
`FAILURE TO CURE THE DEFICIENCIES IN ITS COMPLAINT
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`First, NorthStar’s assertion that the Court only identified a single deficiency regarding
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`direct infringement in NorthStar’s original Complaint is wrong. The Court stated that NorthStar’s
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`original Complaint deficiently failed to “allege how BMW uses the inventions claimed in the
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`Patents-in-Suit” and advanced “factual allegations of infringement [that] are thin.” Dkt. 71 at 4-5.
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`The Court made clear that certain factual allegations could “cure this deficiency,” but also
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`explained that “NorthStar does little more than parrot the claim language.” Id. NorthStar’s
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`Amended Complaint parrots the original Complaint, and thus is similarly deficient.
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`While NorthStar relies on the Court’s statement that “NorthStar has largely identified the
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`accused products with sufficient specificity” to support its assertion that the Court identified only
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`one deficiency, Dkt. 81 at 6, nowhere does NorthStar’s Opposition or Amended Complaint address
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`the Court’s instruction that “[t]here should be more than the claim language presented.” Dkt. 71 at
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`5. Instead, the Amended Complaint merely breaks out claim elements, copies them, and adds the
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`same nominal language that BMW’s Navigation System performs the elements in the same manner
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`as the deficient original Complaint. See Dkt. 74 ¶¶ 19-76. Thus, NorthStar is wrong in claiming
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`that “the only deficiency the Court required NorthStar to address” was the original Complaint’s
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`failure to “allege how BMW uses the inventions claimed in the Patents-in-Suit . . . .” See Dkt. 81
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`at 6. NorthStar needed to heed the Court’s directive to do “more than parrot the claim language,”
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 7 of 14 PageID #: 1057
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`but NorthStar did not. See Dkt. 71 at 5. Accordingly, NorthStar’s Amended Complaint fails for
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`the same reason as the original Complaint.
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`Second, NorthStar wrongly alleges that BMW AG attempts to circumvent the Court’s order
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`when BMW AG explains that “Navigation System” is a non-specific term. Dkt. 81 at 6. But it is
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`NorthStar that proposes “a bald workaround to the Court’s clear directive,” id., by failing to assert
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`which components of the blanket term “BMW’s Navigation System” allegedly infringe each claim
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`limitation of the asserted patents. By continuing to graft elements from the asserted claims to a
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`catch-all “BMW Navigation System,” NorthStar fails to address the Court’s clear directive to do
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`more than merely parroting the claim language.
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`Further, while the Court may have stated that BMW AG was put on notice of the class of
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`products allegedly infringing, Dkt. 71 at 5, NorthStar’s still fails to identify which components
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`within that broad and undefined class of products allegedly infringe each asserted claim limitation.
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`Thus, the deficiency persists, giving BMW AG no notice as to what specific functionality is being
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`accused of infringement. Indeed, NorthStar argues that its infringement allegations are not limited
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`to the “BMW Navigation System,” but that they also cover the BMW iDrive infotainment system.
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`Dkt. 81 at 7. This conflation of what NorthStar alleges to be distinct systems further underscores
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`the deficiencies of the Amended Complaint, which merely parrots claim language instead of tying
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`specific components or functionality of BMW’s iDrive infotainment system or Navigation System
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`to specific claim language.
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`Moreover, non-party BMW NA’s declaratory judgment complaint in the Western District
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`of Texas should have no effect on BMW AG’s Motion to Dismiss in this District. NorthStar cannot
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`impute the declaratory judgment complaint of another party in another district in order to alleviate
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`NorthStar’s burden to put BMW AG on notice of allegedly infringing conduct in this action. The
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 8 of 14 PageID #: 1058
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`Court instructed NorthStar to plead more than parroted claim language, and NorthStar failed that
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`charge. NorthStar has provided no factual allegation regarding how any component or
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`functionality within any specific BMW Navigation System, which includes a whole “class of
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`products,” Dkt. 71 at 5, allegedly infringes NorthStar’s asserted patents. Rather, NorthStar’s
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`Amended Complaint merely repeats the claim language and nominally ties it to the class BMW
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`Navigation Systems, just as the insufficient original Complaint did.
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`Third, NorthStar is misguided in attempting to distinguish Chapterhouse, LLC v. Shopify,
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`Inc., and argue that the Amended Complaint need not contain the detail required for a software
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`case. Dkt. 81 at 8 (citing No. 2:18-cv-00300-JRG, 2018 WL 6981828 (E.D. Tex. Dec. 11, 2018)).
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`As an initial matter, the technology at issue in Chapterhouse is comparable to the technology at
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`issue here, so the same test should apply. While NorthStar concludes without explanation that
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`Chapterhouse’s electronic transaction receipt system is unlike BMW’s accused technology, both
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`of which plainly involve computerized hardware and software components working together,
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`Chapterhouse makes clear that specific technical distinctions are not the proper inquiry in
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`determining whether a heightened pleading standard applies. Rather, Chapterhouse distinguishes
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`between a heightened pleading standard for claims of “more complicated patents” versus less-
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`detailed pleadings for claims of “relatively simple patents.” Chapterhouse at *2. NorthStar does
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`not dispute the complicated nature of the claims here— the limitations purportedly cover intangible
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`software elements, including those of a navigation system, the systems, processors, and
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`components that make up the navigation system. This is complex technology. Cf., Disc Disease
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`Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018); Chapterhouse at *2 (explaining
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`that the technology in Disc Disease involved “simple technology,” such as “a spinal brace with a
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`flexible air injectable band”).
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 9 of 14 PageID #: 1059
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`NorthStar’s citation to various cases where heightened pleading was not required further
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`underscores the insufficient allegations for the complex technology in the Amended Complaint
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`here. For example, the Court in CXT Systems, Inc. v. Academy, Ltd. agreed with plaintiff’s reliance
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`on Disc Disease Solutions because the technology in both cases was “similar” (and simple). No.
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`2:18-CV-00171-RWS-RSP, 2019 WL 1858301, at *3 (E.D. Tex. Mar. 11, 2019), report and
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`recommendation adopted, No. 2:18-CV-00171-RWS-RSP, 2019 WL 1795929 (E.D. Tex. Apr. 24,
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`2019) (citing Disc Disease Solutions Inc. v. VGH Solutions, Inc., 888 F.3d 1256, 1259-60 (Fed.
`
`Cir. 2018)). But Chapterhouse found that the simple technology in Disc Disease Solutions was
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`“inapposite” to the complex technology at issue there, applying a heightened standard to such
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`technology. 2018 WL 6981828, at *2. And like the technology in Chapterhouse, BMW’s accused
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`technology is “[c]ontrary to the relatively simple patents of” Disc Disease Solutions. Id. at *2.
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`Accordingly, the Amended Complaint needed to plead facts sufficient to put BMW AG on notice
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`of infringing the complicated claims at issue. Instead, the Amended Complaint merely parrots
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`claim language and includes a screenshot, but it does not “allege how the screenshots meet the text
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`of the exemplary claim in order to lay out sufficient factual allegations which might permit the
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`Court to find that the Iqbal/Twombly standard is met.” Id.
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` NorthStar’s reliance on Fractus, S.A. v. TCL Corp., No. 2:20-CV-00097-JRG, 2021 WL
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`2483155 (E.D. Tex. June 2, 2021) is similarly misplaced. First, the court there did not “tak[e] into
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`account that the ‘technology [] is less complicated than the technology [in Chapterhouse]’ in
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`finding the Complaint sufficiently pled facts to support claims for direct and indirect
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`infringement,” as NorthStar alleges. See Dkt. 81 at 9. Rather, the plaintiff distinguished
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`“Chapterhouse on the basis that the technology in [that] suit is less complicated than the
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`technology there.” 2021 WL 2483155, at * 2. However, the court did not take it as fact that the
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 10 of 14 PageID #: 1060
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`technology in Fractus was less complicated than the technology in Chapterhouse. Moreover, the
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`Court in Fractus explained that while “the fatal flaw in the Chapterhouse complaint was the failure
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`to include descriptive explanations of the screenshots included in the complaint; Fractus includes
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`both images of the accused structures and descriptive paragraphs.” Id. at * 3. Thus, the complaint
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`in Fractus survived the motion to dismiss because it included images of the accused structures and
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`descriptive paragraphs, which satisfy the Chapterhouse standard. But unlike the sufficient
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`complaint in Fractus, and just like the insufficient complaint in Chapterhouse, NorthStar’s
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`Amended Complaint fails “to include descriptive explanations of the screenshots included in the
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`complaint.” Id; see also Dkt. 74, at 7-10, 13-16, and 19-22. Thus, NorthStar fails to plead a
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`plausible claim for infringement in its amended complaint.
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`Fourth, NorthStar’s preliminary infringement contentions do not replace the function of
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`its Amended Complaint. Specifically, a complaint, not preliminary infringement contentions, must
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`contain “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 570 (2007); see also Panoptis Pat. Mgmt., LLC v. Blackberry Corp., No.
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`2:16-CV-00059-JRG-RSP, 2017 WL 780885 (E.D. Tex. Feb. 10, 2017), report and
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`recommendation adopted, No. 2:16-CV-00059-JRG-RSP, 2017 WL 780880 (E.D. Tex. Feb. 28,
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`2017) (explaining that the “complaint—not motions, expert reports, or infringement contentions—
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`governs scope of litigant's claim”) (citing Lodsys Grp., LLC v. Brother Int'l Corp., No. 2:11-CV-
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`00090-JRG, 2013 WL 5353004, at *2 (E.D. Tex. Sept. 24, 2013)). This is why a motion to dismiss
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`under 12(b)(6) is directed at the complaint, not any contentions, and NorthStar cannot shift the
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`function of the complaint to infringement contentions. This is especially true where NorthStar’s
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`amended complaint does not even incorporate the infringement contentions by reference.
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`Moreover, even if NorthStar had included the allegations in its infringement contentions in
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 11 of 14 PageID #: 1061
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`the Amended Complaint (and that NorthStar did not underscore the minimal effort NorthStar took
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`to comply with this Court’s Order that NorthStar do more than parrot claim language), NorthStar’s
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`preliminary infringement contentions fail to provide notice of BMW AG’s alleged infringement.
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`Instead, the contentions cite to information from third-party websites unaffiliated with BMW AG
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`to allege that claim limitations were infringed. See e.g., Ex. 2 (Appendix A of NorthStar’s
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`Preliminary Infringement Contentions), at 4-40 (continuously citing information from an
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`unaffiliated here.com as basis for infringement by BMW). Thus, even if the preliminary
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`infringement contentions could be considered part of the Amended Complaint, which they cannot,
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`they fail to cure the deficiencies of NorthStar’s amended complaint.
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`For this reason, NorthStar’s preliminary infringement contentions are nothing like the
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`plaintiff’s infringement contentions in Panoptis Pat. Mgmt., LLC v. Blackberry Corp., No. 2:16-
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`CV-00059-JRG-RSP, 2017 WL 780885 (E.D. Tex. Feb. 10, 2017), report and recommendation
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`adopted, No. 2:16-CV-00059-JRG-RSP, 2017 WL 780880 (E.D. Tex. Feb. 28, 2017). While the
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`Court in Panoptis explained that “in most cases, . . . a defendant gains nothing beyond whatever
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`nuisance the motion creates for the plaintiff” if the plaintiff amends its complaint “after the plaintiff
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`has served infringement contentions,” NorthStar’s contentions are not like the “detailed
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`infringement contentions” in that case. Id. at * 4. Rather, NorthStar’s infringement contentions
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`rely on third-party information, with no connection to BMW systems or devices, to allege that
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`BMW infringes. Thus, there are no “detailed infringement contentions” here to rectify the
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`deficiencies of NorthStar’s amended complaint. Similarly, in Estech Sys., Inc. v. Target Corp.,
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`plaintiff’s infringement contentions addressed the complaint’s deficiency in alleging “how the
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`accused systems infringe the Asserted Patents.” No. 2:20-CV-00123-JRG-RSP, 2020 WL
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`6496425, at *2 (E.D. Tex. Aug. 10, 2020), report and recommendation adopted, No. 2:20-CV-
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 12 of 14 PageID #: 1062
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`00123-JRG-RSP, 2021 WL 966016 (E.D. Tex. Mar. 12, 2021). But unlike the contentions there,
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`NorthStar’s infringement contentions fail to allege “how the accused systems infringe the Asserted
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`Patents” because the contentions point to third-party information, not BMW’s systems or devices,
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`to allege infringement. See id. Thus, NorthStar’s infringement contentions are directed to third-
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`party activities, and not how BMW’s systems infringe the asserted patents.
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`Fifth, BMW never waived its right to challenge the sufficiency of NorthStar’s allegations
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`of indirect infringement. Rather, BMW advanced a basis for which NorthStar’s indirect
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`infringement allegations fail: the same reason that NorthStar’s direct infringement allegations are
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`insufficient. Dkt. 80 at 7 (citing Realtime Data, LLC v. Morgan Stanley, 721 F.Supp.2d 538, 544
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`(E.D. Tex. Jun. 10, 2010)). In Realtime Data, the court explained that “a complaint alleging
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`indirect infringement [must] affirmatively identify which claims are indirectly infringed, identify
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`which methods or systems indirectly infringe, and identify a direct infringer in reference to indirect
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`infringement claims.” 721 F.Supp.2d at *544 (citing Clear with Computers, LLC v. Bergdorf
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`Goodman, Inc., No. 6:09–cv–481, slip op. at 7 (E.D. Tex. Mar. 29, 2010)) (internal quotations
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`omitted). While the plaintiff in Realtime Data may have “fail[e]d to identify which other party
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`committed the underlying act of infringement,” that does not change the fact that an indirect
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`infringement claim must also “identify which methods or systems indirectly infringe.” As
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`previously explained, NorthStar’s amended complaint fails to allege specifically which methods
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`or systems infringe. Thus, NorthStar’s allegations of indirect infringement are also insufficient.
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`Finally, NorthStar should not be allowed another opportunity to amend its Complaint.
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`While NorthStar claims that it has not caused a long delay, that does not change the fact that
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`NorthStar has now twice amended its Complaint, repeating only two new sentences throughout its
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`Complaint. See Dkt. 1-1 (comparing NorthStar’s original Complaint and its Amended Complaint).
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 13 of 14 PageID #: 1063
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`That is, the entirety of the additional time granted to NorthStar by the opportunity to amend has
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`resulted in a two sentences. Since BMW would only be prejudiced by another amended complaint
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`by a party who has shown that it cannot point to anything concrete for even a basic plausible
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`pleading of claim infringement, this Court should follow the guidance of other courts which denied
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`a further opportunity to amend under similar circumstances. See Semcon Ip Inc. v. Huawei Device
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`USA Inc., No. 2:16-cv-00437-JRG-RSP, at *1 (E.D. Tex. Sept. 29, 2017); see, e.g., Chemetron
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`Corp. v. Bus. Funds, Inc., 682 F.2d 1149, 1194 (5th Cir. 1982), vacated on other grounds, 460 U.S.
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`1007 (1983).
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`III. CONCLUSION
`For the foregoing reasons, BMW AG respectfully requests that the Court dismiss
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`NorthStar’s Amended Complaint under Rule 12(b)(6).
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`Dated: November 9, 2023
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`Respectfully submitted,
`
`/s/Lionel M. Lavenue
`Lionel M. Lavenue
`Virginia Bar No. 49,005
`lionel.lavenue@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`
`ATTORNEY FOR DEFENDANT
`BAYERISHCE MOTOREN WERKE AG
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`Case 2:22-cv-00486-JRG Document 82 Filed 11/09/23 Page 14 of 14 PageID #: 1064
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 9, 2023, I caused the foregoing DEFENDANT
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`BAYERISCHE MOTOREN WERKE AG’S REPLY IN SUPPORT OF MOTION TO
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`DISMISS PLAINTIFF’S AMENDED COMPLAINT PURSUANT TO RULE 12(b)(6) to be
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`electronically filed with the Clerk of the Court using the CM/ECF system which will send
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`notification of such filing via electronic mail to all counsel of record.
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`/s/Lionel M. Lavenue
`Lionel M. Lavenue
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`