Case 2:24-cv-00353-JRG Document 40 Filed 10/03/24 Page 1 of 9 PageID #: 771
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ADVANCED CODING
`TECHNOLOGIES LLC,
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`v.
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`GOOGLE LLC,
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`CIVIL ACTION NO. 2:24-cv-00353-JRG
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`Plaintiff,
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`Defendant.
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`DEFENDANT GOOGLE LLC’S MOTION TO DISMISS FIRST AMENDED
`COMPLAINT FOR FAILURE TO STATE A CLAIM
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`Case 2:24-cv-00353-JRG Document 40 Filed 10/03/24 Page 2 of 9 PageID #: 772
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...............................................................................................................1
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`BACKGROUND .................................................................................................................1
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`III.
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`ACT’S UNSUPPORTED CLAIMS SHOULD BE DISMISSED .......................................2
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`A.
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`B.
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`ACT’s Indirect Infringement Claims of the ’101 and ’891 Patents Should
`Be Dismissed ...........................................................................................................2
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`ACT’s Willfulness Claim of the ’101 Patent Should Be Dismissed .......................5
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`IV.
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`CONCLUSION ....................................................................................................................6
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`i
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`I.
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`INTRODUCTION
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`Advanced Coding Technologies LLC’s (“ACT”) Amended Complaint fails to adequately
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`plead indirect infringement for U.S. Patent No. 8,230,101 (“’101 patent”) and U.S. Patent No.
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`7,804,891 (“’891 patent”) and willful infringement for the ’101 patent. ACT’s claims of indirect
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`infringement of the ’101 and ’891 patents contain no factual allegations and therefore fail to plead
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`plausible facts to show either knowledge of the patents or of infringement. Further, ACT fails to
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`plead any facts to support its allegation that Google had knowledge of or was willfully blind to the
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`’101 and ’891 patents or infringement of those patents. In the same vein, ACT also pleads no
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`factual basis to show that Google had the requisite intent to induce infringement or to show that
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`the accused products for the ’101 and ’891 patents have no substantial non-infringing uses. And,
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`ACT’s pleading of willful infringement of the ’101 patent is similarly conclusory and includes no
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`facts to support Google had knowledge of the patents or knowledge of infringement.
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`Because the Amended Complaint relies on allegations that are conclusory, lack sufficient
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`factual support, fail to put Google on fair notice of its claims, and are comparable to allegations
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`that courts have regularly found to be insufficient, ACT’s allegations of indirect infringement of
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`the ’101 and ’891 patents and its allegation of willful infringement of the ’101 patent should be
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`dismissed.
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`II.
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`BACKGROUND
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`On May 10, 2024, Plaintiff ACT filed its initial Complaint against Google alleging
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`infringement of three patents: U.S. Patent Nos. 8,090,025 (“’025 patent”), 9,986,303 (“’303
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`patent”), 10,218,995 (“’995 patent”). D.I. 1. On August 2, 2024, in response to Google’s motion
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`to dismiss, ACT filed an Amended Complaint including allegations of indirect infringement of the
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`same three patents plus three more for a total of six: the ’025 patent, the ’303 patent”, the’995
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`patent, U.S. Patent No. 9,042,448 (“’448 patent”), the’101 patent, and the ’891 patent (collectively,
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`1
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`the “Asserted Patents”). D.I. 23 (“Am. Compl.”). The Amended Complaint includes allegations of
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`willful infringement of five of those patents, excluding only the ’891 patent. Id. ¶¶ 109, 126, 143,
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`160, 174.
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`III. ACT’S UNSUPPORTED CLAIMS SHOULD BE DISMISSED
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`To survive a motion to dismiss, “a complaint must contain sufficient factual matter,
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`accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556
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`U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is
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`plausible on its face if it contains sufficient facts to support a “reasonable inference” of liability.
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`Id. If the pleaded facts “do not permit the court to infer more than the mere possibility of
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`misconduct,” dismissal is warranted. Id. at 679. Although “specific facts are not necessary,” the
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`complaint should provide “fair notice of what the claim is and the grounds upon which it rests.”
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`Erickson v. Pardus, 551 U.S. 89, 93 (2007) (cleaned up). The Court should not “strain to find
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`inferences favorable to the plaintiffs” nor accept “conclusory allegations, unwarranted deductions,
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`or legal conclusions.” See R2 Invs. LDC v. Phillips, 401 F.3d 638, 642 (5th Cir. 2005) (citation
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`omitted).
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`A.
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`ACT’s Indirect Infringement Claims of the ’101 and ’891 Patents Should Be
`Dismissed
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`A claim for indirect infringement requires both knowledge of the asserted patents and
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`knowledge of infringement. Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 639 (2015). ACT
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`has not plausibly pleaded either of these elements and so its indirect infringement claims of the
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`’101 and ’891 patents should be dismissed. Am. Compl. ¶¶ 172-74, 184-86.
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`ACT alleges no pre-suit knowledge by Google of the ’101 and ’891 patents. Id. ¶ 89; see
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`also ¶¶ 161-186. For both inducement and contributory infringement, the complaint provides only
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`conclusory allegations of knowledge, reciting that “Google performs these affirmative acts with
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`2
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`knowledge of the [patent] and with the intent, or willful blindness,” “that the induced acts directly
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`infringe the [patent]” or “that they cause the direct infringement of the [patent].” See Am. Compl.
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`¶¶ 172-73, 184-85. These “legal conclusions” merely parrot the legal tests underlying indirect
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`infringement, and are insufficient to support ACT’s indirect infringement claims for the ’101 and
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`’891 patents. Commil USA, LLC, 575 U.S. at 639; Iqbal, 556 U.S. at 678.
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`The Amended Complaint also contains no facts to support that Google had taken any
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`“deliberate actions” to avoid knowledge of the ’101 and ’891 patents or infringement, as required
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`to support a willful blindness theory. Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769
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`(2011); Kirsch Rsch. & Dev., LLC v. Tarco Specialty Prods., Inc., No. 6:20-cv-00318-ADA, 2021
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`WL 4555802, at *2 (W.D. Tex. Oct. 4, 2021) (“A plaintiff who relies on willful blindness to plead
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`knowledge must identify in its complaint affirmative actions taken by the defendant to avoid
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`gaining actual knowledge of the patent to escape dismissal.”). ACT’s pleadings do not plausibly
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`support an inference of pre-suit knowledge of either the ’101 and ’891 patents, nor do they plead
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`facts sufficient to support knowledge by Google that it infringes those patents or that it was
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`willfully blind to them.
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`Further, the Amended Complaint provides no sufficient specific factual basis for its
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`induced or contributory infringement allegations for the ’101 and ’891 patents.
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`To maintain a claim for induced infringement, ACT “must plead facts plausibly showing
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`that the accused infringer specifically intended another party to infringe the patent and knew that
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`the other party’s acts constituted infringement.” See Lifetime Indus., Inc. v. Trim-Lok, Inc., 869
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`F.3d 1372, 1379 (Fed. Cir. 2017) (internal citations and quotations omitted). When pleading
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`inducement, the complaint merely recites conclusory allegations, asserting that Google “provid[es]
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`instructions, documentation, and other information to customers and end-users” and “suggest[s]
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`that [customers and end-users] use the [Accused Products] in an infringing manner, including
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`technical support, marketing, product manuals, advertisements, and online documentation,” but
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`provides no factual basis to show that Google induces the ’101 and ’891 patents specifically. Am.
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`Compl. ¶¶ 172, 184.
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`These formulaic recitations fall short of providing a sufficient factual basis for the requisite
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`intent for inducement. Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 6:14-CV-752-JRG-
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`JDL, 2015 WL 4910427, at *4 (E.D. Tex. Aug. 14, 2015) (“[G]eneric allegations that an alleged
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`infringer provides instructional materials along with the accused products, without more, are
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`insufficient to create a reasonable inference of specific intent for the purposes of an induced
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`infringement claim.”); Iqbal, 556 U.S. at 678 (“Threadbare recitals of the elements of a cause of
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`action, supported by mere conclusory statements, do not suffice.”).
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`In particular, “the intent necessary for a claim of ‘[i]nducement can be found where there
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`is [e]vidence of active steps taken to encourage direct infringement.’” In re Taasera Licensing
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`LLC, Pat. Litig., No. 2:22-CV-00063-JRG, 2023 WL 2465584, at *4 (E.D. Tex. Mar. 10, 2023)
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`(quoting Barry v. Medtronic, Inc., 914 F.3d 1310, 1334 (Fed. Cir. 2019)). “These active steps
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`include advertising an infringing use, instructing how to engage in an infringing use, and assisting
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`in performing an infringing use,” but ACT has pleaded no such facts. Motiva Pats., LLC v. Sony
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`Corp., 408 F. Supp. 3d 819, 828 (E.D. Tex. 2019) (cleaned up).
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`ACT follows the same pattern when pleading contributory infringement for ’101 and ’891
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`patents, asserting in conclusory fashion that “[t]he accused components within the [Accused
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`Products] including, but not limited to, software manufactured by Google, are material to the
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`invention of the [patent], are not staple articles or commodities of commerce, have no substantial
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`non-infringing uses, and are known by Google to be especially made or adapted for use in the
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`infringement of the [patent].” Am. Compl. ¶¶ 173, 185. Here again, these recitations fail to identify
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`how the accused components are “material and especially adapted for infringement” or why they
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`have no substantial non-infringing uses. Accordingly, they should be dismissed. Core Wireless,
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`2015 WL 4910427, at *5; PPG Indus. Ohio, Inc. v. Axalta Coating Sys., LLC, No. CV 21-346-
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`LPS-SRF, 2022 WL 610740, at *3 (D. Del. Jan. 26, 2022), report and recommendation adopted,
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`2022 WL 611260 (D. Del. Feb. 18, 2022) (“simply parroting” the statutory language of “no
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`substantial non-infringing use” is not sufficient).
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`B.
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`ACT’s Willfulness Claim of the ’101 Patent Should Be Dismissed
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`As with inducement, a claim for willfulness requires both knowledge of the patent and
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`knowledge of infringement. CTD Networks LLC v. Microsoft Corp., No. W-22-CV-01049-XR,
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`2023 WL 5417141, at *9 (W.D. Tex. Aug. 22, 2023). ACT has not plausibly alleged either for the
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`’101 patent.1 Am. Compl. ¶ 174.
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`ACT alleges no pre-suit knowledge by Google of the ’101 patent. Id. ¶ 89; see also ¶¶ 161-
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`74. The complaint merely asserts in a conclusory manner that: “ACT has suffered damages as a
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`result of Defendant’s direct, indirect, and willful infringement of the ’101 Patent in an amount to
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`be proved at trial.” Am. Compl. ¶ 174. That legal conclusion is the extent of ACT’s willful
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`infringement allegation of the ’101 patent and is insufficient. Iqbal, 556 U.S. at 678-79 (Rule 8
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`“does not unlock the doors of discovery for a plaintiff armed with nothing more than
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`conclusions.”); see also Doe v. Robertson, 751 F.3d 383, 393 (5th Cir. 2014).
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`Further, ACT does not allege that it conducted any pre-suit activity courts have typically
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`found sufficient to establish pre-suit knowledge, such as sending a pre-suit notice letter or sending
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`1 ACT does not allege willful infringement of the ’891 patent, but to the extent ACT attempts to
`argue the Amended Complaint includes such a claim, it would fail for the same reasons as the
`willfulness claim of the ’101 patent. Am. Compl. ¶¶ 184-86.
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`5
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`claim charts detailing how Google purportedly infringes the ’101 patent. See, e.g., CyboEnergy,
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`Inc. v. Hoymiles Power Elecs. USA, Inc., No. 2:23-CV-00311-JRG, 2024 WL 1219725, at *6 (E.D.
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`Tex. Mar. 20, 2024) (“pre-filing notice letter or pre-suit interactions”); Network Sys. Techs., LLC
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`v. Texas Instruments Inc., No. 2:22-cv-00482-RWS, Dkt. No. 95, at 3 (E.D. Tex. Sept. 25, 2023)
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`(“pre-suit knowledge, such as letters, communications between Plaintiff and Defendants, or patent
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`markings”).
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`ACT not only fails to allege any factual basis regarding knowledge of infringement, but
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`also fails to plead facts showing “deliberate or intentional infringement” as required for willful
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`infringement. SRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1330 (Fed. Cir. 2021) (citation
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`omitted); Fractus, S.A. v. TCL Corp., No. 20-cv-00097-JRG, 2021 WL 2483155, at *4 (E.D. Tex.
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`June 2, 2021) (“While this paragraph does allege notice (and therefore knowledge) of the patents-
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`in-suit, it does not allege any culpable conduct or any set of facts supporting an inference of
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`culpable conduct.”).
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`ACT’s willful infringement allegations for the ’101 patent are therefore unsupported by
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`any facts and should be dismissed.
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`IV. CONCLUSION
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`For the foregoing reasons, Google respectfully requests that the claims for indirect
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`infringement of the ’101 and ’891 patents and the claim for willful infringement of the ’101 patent
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`be dismissed because ACT fails to state a claim for which relief may be granted.
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`6
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`Case 2:24-cv-00353-JRG Document 40 Filed 10/03/24 Page 9 of 9 PageID #: 779
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`/s/ Shaun W. Hassett, with permission for
`Douglas E. Lumish
`Michael E. Jones (State Bar No. 10929400)
`mikejones@potterminton.com
`Shaun W. Hassett (State Bar No. 24074372)
`shaun.hassett@potterminton.com
`POTTER MINTON, P.C.
`102 North College, Suite 900
`Tyler, Texas 75702
`(903) 597-8311
`(903) 593-0846 facsimile
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`Attorneys for Defendant
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`Dated October 3, 2024
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`OF COUNSEL:
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`Douglas E. Lumish
`Linfong Tzeng
`LATHAM & WATKINS LLP
`140 Scott Drive
`Silicon Valley, CA 94025
`Tel: (650) 328-4600
`Fax: (650) 463-2600
`doug.lumish@lw.com
`linfong.tzeng@lw.com
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`Patricia Young
`LATHAM & WATKINS LLP
`1271 Avenue of the Americas
`New York, NY 10020
`Tel: (212) 906-1200
`Fax: (212) 751-4864
`patricia.young@lw.com
`
`Joseph H. Lee
`LATHAM & WATKINS LLP
`650 Town Center Drive, 20th Floor
`Costa Mesa, CA 92626
`Tel: (714) 540-1235
`Fax: (714) 755-8290
`joseph.lee@lw.com
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