Case 2:24-cv-00353-JRG Document 47 Filed 12/13/24 Page 1 of 8 PageID #: 834
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Plaintiff,
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`ADVANCED CODING TECHNOLOGIES
`LLC,
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`v.
`GOOGLE LLC,
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`Defendant.
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`MEMORANDUM OPINION AND ORDER
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`CIVIL ACTION NO. 2:24-CV-00353-JRG
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`Before the Court is Defendant Google LLC’s Motion to Dismiss First Amended Complaint
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`for Failure to State a Claim (the “Motion”). (Dkt. No. 40.) Having considered the Motion, the
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`briefing, and for the reasons set forth herein, the Court is of the opinion that the Motion should be
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`and hereby is GRANTED-IN-PART and DENIED-IN-PART.
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`I.
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`BACKGROUND
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`On May 10, 2024, Plaintiff Advanced Coding Technology (“ACT”) filed this action against
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`Google for infringement of three patents: U.S. Patent No. 8,090,025 (the “’025 Patent”),
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`U.S. Patent No. 9,986,303 (the “’303 Patent”), U.S. Patent No. 10,218,995 (the “’995 Patent”).
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`(Dkt. No. 1 at ¶¶ 72-74.) On August 2, 2024, ACT filed an Amended Complaint including
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`allegations of indirect infringement of the same three patents plus three more patents: U.S. Patent
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`No. 9,042,448 (the “’448 Patent”), U.S. Patent No. 8,230,101 (the “’101 Patent”), and U. S. Patent
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`No. 7,804,891 (the “’891 Patent”) (collectively, the “Asserted Patents”). (Dkt. No. 23 at ¶¶ 75-77,
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`105-06, 122-23, 138-39, 156-57, 172-73, 184-86.) The Amended Complaint also includes
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`allegations of willful infringement. (Id. at ¶¶ 107, 124, 140, 158, 174, 187.) On October 3, 2024,
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`Google filed this Motion seeking to dismiss ACT’s allegations of indirect infringement of the ’101
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`and ’891 Patents and ACT’s allegations of willful infringement of the ’101 Patent. (Dkt. No. 40.)
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`Case 2:24-cv-00353-JRG Document 47 Filed 12/13/24 Page 2 of 8 PageID #: 835
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`II.
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`LEGAL STANDARD
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`Under the Federal Rules of Civil Procedure, a complaint must include “a short and plain
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`statement of the claim showing that the pleader is entitled to relief.” FED. R. CIV. P. 8(a)(2).
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`A court can dismiss a complaint that fails to meet this standard. FED. R. CIV. P. 12(b)(6).
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`“To survive dismissal at the pleading stage, a complaint must state ‘enough facts such that the
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`claim to relief is plausible on its face.’” Thompson v. City of Waco, 764 F.3d 500, 502 (5th Cir.
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`2014) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is facially plausible
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`“when the plaintiff pleads enough facts to allow the Court to draw a reasonable inference that the
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`defendant is liable for the misconduct alleged.” Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678
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`(2009)). The Court accepts well-pled facts as true and views all facts in the light most favorable
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`to the plaintiff, but the Court is not required to accept the plaintiff’s legal conclusions as true. Id.
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`In the context of patent infringement, a complaint must place the alleged infringer on notice
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`of what activity is being accused of infringement. Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d
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`1372, 1379 (Fed. Cir. 2017). However, the plaintiff is not required to prove its case at the pleading
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`stage. Id. Ultimately, motions to dismiss under Rule 12(b)(6) are viewed with disfavor and are
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`rarely granted. Lormand v. US Unwired, Inc., 565 F.3d 228, 232 (5th Cir. 2009); Lowrey v. Texas
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`A&M Univ. Sys., 117 F.3d 242, 247 (5th Cir. 1997).
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`III. DISCUSSION
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`A.
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`Indirect Infringement
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`Google argues that ACT’s indirect infringement claims should be dismissed because ACT
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`has not plausibly pled that Google had the requisite knowledge of the ’101 and ’891 Patents or that
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`Google was willfully blind to its infringement of the ’101 and ’891 Patents. (Dkt. No. 40 at 2-3.)
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`Additionally, Google argues that ACT fails to provide a sufficient factual basis for its claims of
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`induced infringement and contributory infringement. (Id. at 3-4.)
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`1.
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`Requisite Pre-Suit Knowledge for Indirect Infringement
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`First, Google argues that ACT neither alleges Google had pre-suit knowledge of ’101 and
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`’891 Patents nor facts sufficient to support a willful blindness theory. (Dkt. No. 40 at 2-3.)
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`In response, ACT concedes that it is not alleging pre-suit knowledge. (Dkt. No. 44 at 1.) Instead,
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`ACT argues that not only are allegations of post-suit knowledge sufficient because the law has no
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`requirement for pre-suit knowledge, but also that the filing and service of a complaint is sufficient
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`to satisfy the knowledge requirement of indirect infringement. (Dkt. No. 41 at 2-3.)
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`The Court finds that ACT has adequately alleged the requisite knowledge element for its
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`claims of post-suit indirect infringement for the ’101 and ’891 Patents. ACT alleges that “[Google]
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`has had actual notice of the ’101 and ’891 Patents, at least as of the filing date of this First Amended
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`Complaint” and continues to indirectly infringe. Dkt. No. 23 at ¶¶ 89, 172; see Corydoras Techs.,
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`LLC v. Apple Inc., No. 2:16-CV-00538-JRG, 2016 WL 9242435, at *2 (E.D. Tex. Nov. 23, 2016)
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`(“[A] patentee need not allege pre-suit knowledge of the patent to state a claim for post-suit
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`induced infringement.”). In light of ACT’s admission that it is not alleging pre-suit knowledge,
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`however, the Court finds that ACT’s pre-suit indirect infringement allegations should be dismissed.
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`See CyboEnergy, Inc. v. Hoymiles Power Elecs. USA, Inc., No. 2:23-CV-00311-JRG, 2024 WL
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`1219725, at *6 (E.D. Tex. Mar. 20, 2024) (dismissing pre-suit indirect infringement allegations
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`where plaintiff failed to plead any facts showing that defendant knew of the asserted patents prior
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`to the lawsuit.”).
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`2.
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`ACT’s Claim of Induced Infringement
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`To state a claim for induced infringement, a plaintiff must allege facts to plausibly support
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`the assertion that the defendant specifically intended a third party to directly infringe the plaintiff’s
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`patent and knew that the third party’s acts constituted infringement. 35 U.S.C. § 271(b); In re Bill
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`of Lading Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012).
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`Google argues that ACT fails to sufficiently plead a factual basis for its induced
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`infringement allegations because the Amended Complaint fails to provide a factual basis to show
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`that Google induces infringement of the ’101 and ’891 Patents. (Dkt. No. 40 at 3-4 (citing Dkt.
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`No. 23 at ¶¶ 172, 184).) ACT contends that its allegations are sufficient because they are similar
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`to allegations that courts have previously held were sufficient. (Dkt. No. 41 at 4-5 (citing
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`Lexington Luminance LLC v. Lowe’s Home Centers, LLC, No. 4:18-CV-301-ALM-KPJ, 2019 WL
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`1417440, at *2 (E.D. Tex. Mar. 13, 2019), report and recommendation adopted, No. 4:18-CV-301,
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`2019 WL 1407421 (E.D. Tex. Mar. 28, 2019) (finding that the complaint sufficiently pled induced
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`infringement where defendant “instructs customers on how to use the infringing technology”).)
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`The Court agrees with ACT and finds that ACT sufficiently pleads induced infringement
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`of the ’101 and ’891 Patents. Here, ACT pleads that Google intends that customers and end-users
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`use the ’101 and ’891 Accused Products in an infringing manner, and ACT supports this allegation
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`by pointing out that Google provides these third parties with instructions, documentation, and other
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`information on how to use the infringing technology. (Dkt. No. 23 at ¶¶ 172, 184.) As additional
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`support, ACT provides links to specific Google documents. Accordingly, ACT’s Amended
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`Complaint pleads the intent required to support its claims of induced infringement.
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`3.
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`ACT’s Claim of Contributory Infringement
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`Contributory infringement occurs if a party sells or offers to sell a material or apparatus for
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`use in practicing a patented process and that material or apparatus is a material part to practicing
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`the invention, has no substantial non-infringing uses, and is known by the party to be especially
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`made or especially adapted for use in an infringement of such patent. 35 U.S.C. § 271(c);
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`In re Bill of Lading, 681 F.3d at 1337. Accordingly, to state a claim for contributory infringement,
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`a plaintiff must, among other things, plead facts that allow an inference that the components sold
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`or offered for sale have no substantial non-infringing uses. In re Bill of Lading, 681 F.3d at 1337.
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`Google argues that ACT fails to sufficiently plead a factual basis for its contributory
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`infringement claims because the allegations are conclusory recitations that do not identify how the
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`accused components are material and especially adapted for infringement or why they have no
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`substantial non-infringing uses. (Dkt. No. 40 at 4-5 (citing Dkt. No. 23 at ¶¶ 173, 185).)
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`In particular, Google argues that the allegations pled do not make it reasonably plausible to infer
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`that using its Cloud CDN or 5G cannot be done without infringing the ’101 and ’891 Patents.
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`(Dkt. No. 42 at 2-3.)
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`In response, ACT argues that its allegations surpass the relatively low bar required at this
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`stage for pleading contributory infringement. (Dkt. No. 41 at 5-6 (citing Lexington, 2019 WL
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`1417440, at *2; Motiva Pats., LLC v. Sony Corp., 408 F. Supp. 3d 819, 826 (E.D. Tex. 2019)).)
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`ACT contends that its Amended Complaint specifically identifies the Accused Products, provides
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`significant detail about the Accused Products, explains how the Accused Products and the accused
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`components infringe the Asserted Patents, and explains how their functionalities correlate to the
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`Asserted Patents. (Dkt. No. 44 at 3-4 (citing Dkt. No. 23 at ¶¶ 86, 163-173, 177-185.).)
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`The Court finds that ACT has sufficiently pled post-suit contributory infringement. First,
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`ACT’s Amended Complaint identifies the Accused Products relating to the ’101 and ’891 Patents.
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`(See Dkt. No. 23 at ¶¶ 83-84, 86, 163, 177.) For example, ACT identifies the Accused Products
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`for the ’101 Patent as “Google’s systems that perform network content delivery, including
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`YouTube, which utilize one or more video codecs for network content delivery, Defendant’s
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`Google Cloud Content Delivery Network (CDN), and Defendant’s Google Smart Home (the ’101
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`Accused Products), which includes a server device for media.” (Dkt. No. 23 at 163.) ACT then
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`explains in considerable detail how these Accused Products and accused components infringe the
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`Asserted Patents. (See Dkt. No. 23 at ¶¶ 165-173, 177-185.) Accordingly, after considering ACT’s
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`specific identification of the Accused Products and the accused components along with ACT’s
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`specific explanation of how the functionalities of the Accused Products correlate to the Asserted
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`Patents, it is reasonable to infer, at the motion to dismiss stage, that the Amended Complaint states
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`adequate facts to infer the technology has no other substantial non-infringing use except to perform
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`the accused functionalities.
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`B. Willful Infringement
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`Google argues that ACT fails to plausibly plead willful infringement of the ’101 Patent
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`because a claim for willfulness requires both knowledge of the patent and knowledge of
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`infringement. (Dkt. No. 40 at 5.) Google contends that ACT fails to allege that Google had pre-suit
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`knowledge of the ’101 Patent because the Amended Complaint does not allege any factual conduct
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`showing pre-suit knowledge. (Dkt. No. 40 at 5.) Google also argues that ACT fails to plead facts
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`showing deliberate or intentional infringement as required for willful infringement. (Dkt. No. 40
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`at 6 (citing SRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1330 (Fed. Cir. 2021) (“[T]he concept
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`of ‘willfulness’ requires a jury to find no more than deliberate or intentional infringement.”).)
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`In response, ACT concedes that it is not alleging pre-suit knowledge. (Dkt. No. 44 at 1.)
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`ACT argues, however, that it has adequately pled willful infringement because alleging post-suit
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`knowledge and Google’s continuing infringement is sufficient. (Dkt. No. 41 at 6.) In support,
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`ACT contends that willfulness can be pled by either pre-suit and post-suit knowledge. (Id. (citing
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`e.g., BillJCo, LLC v. Cisco Sys., Inc., No. 2:21-CV-00181-JRG, 2021 WL 6618529, at *8
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`(E.D. Tex. Nov. 30, 2021) (“[A]n allegation that a defendant continues its allegedly infringing
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`conduct even after receiving notice of a complaint is sufficient to at least state a claim for willful
`infringement.”).)
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`Here, ACT pleads that “[Google] has had actual notice of the ’101 and ’891 Patents, at least
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`as of the filing date of this First Amended Complaint,” and “continues to infringe.” (Dkt. No. 23
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`at ¶¶ 89, 163, 172-174.) As this Court has routinely held, “a plaintiff need not plead facts
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`demonstrating egregious [i.e., ‘culpable’] conduct to establish a claim for willful infringement at
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`the 12(b)(6) stage.” Touchstream Techs., Inc. v. Altice USA, Inc., No. 2:23-CV-00059-JRG, 2024
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`WL 1117930, at *3 (E.D. Tex. Mar. 14, 2024) (quoting Argina Tech. Ltd. v. Bayerische Motoren
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`Werke AG, 2:21-CV-00172-JRG, 2022 WL 610796, at *6 (E.D. Tex. Jan. 24, 2022)). Instead,
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`“allegations that a defendant continues its allegedly infringing conduct even after receiving notice
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`of a complaint are sufficient to at least state a claim for post-suit willful infringement.” Id. (quoting
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`Argina, 2022 WL 610796, at *6). The Complaint, therefore, notifies Google of the ’101 Patent
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`that it is accused of infringing, it recites facts which state a plausible claim of direct and indirect
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`infringement for the ’101 Patent, and it alleges that Google continues its infringing activities.
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`Thus, it is plausible to infer from these facts that Google could be deliberately continuing to
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`infringe despite notice they are infringing the ’101 Patent.
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`Accordingly, the Court finds that ACT sufficiently pleads facts supporting a claim for
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`post-suit willful infringement for the ’101 Patent. However, since the Amended Complaint fails
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`to suggest that Google had pre-suit knowledge of the ‘101 Patent taken together with ACT’s
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`admission that it does not allege pre-suit knowledge, the Court concludes that ACT has failed to
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`state a claim for pre-suit willful infringement.
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`IV. CONCLUSION
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`For the reasons noted above, the Motion is GRANTED with respect to pre-suit induced
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`infringement and pre-suit contributory infringement of ’101 and ’891 Patents and pre-suit willful
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`infringement of ’101 Patent. However, the Motion is DENIED in all other respects.
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`Accordingly, ACT’s claims of pre-suit induced infringement and pre-suit contributory
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`infringement of ’101 and ’891 Patents and pre-suit willful infringement of ’101 Patent are
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`DISMISSED WITHOUT PREJUDICE. ACT is permitted leave during the ensuing fourteen
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`days from the issuance of this Order to amend its allegations of pre-suit induced infringement and
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`pre-suit contributory infringement of ’101 and ’891 Patents and pre-suit willful infringement of
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`’101 Patent through the filing of a subsequently amended complaint. Failure to amend within
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`fourteen days, or any period extended by the Court, shall constitute a substantive waiver of these
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`matters.
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`.
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 12th day of December, 2024.
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