Case 5:19-cv-00036-RWS Document 27 Filed 05/23/19 Page 1 of 18 PageID #: 321
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff,
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
`
`
`Defendant.
`
`
`
`
`
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`JURY TRIAL DEMANDED
`
`DEFENDANT APPLE INC.’S MOTION FOR PARTIAL DISMISSAL OF PLAINTIFF’S
`COMPLAINT FOR FAILURE TO STATE A CLAIM
`
`
`
`
`
`
`
`

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`Case 5:19-cv-00036-RWS Document 27 Filed 05/23/19 Page 2 of 18 PageID #: 322
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`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`STATEMENT OF THE ISSUES........................................................................................ 2
`
`III.
`
`BACKGROUND ................................................................................................................ 3
`
`IV.
`
`LEGAL STANDARD ......................................................................................................... 4
`
`V.
`
`ARGUMENT ...................................................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`This Court Should Dismiss Maxell’s Induced Infringement Claims For
`Failing To Plausibly Allege Apple’s Specific Intent .............................................. 6
`
`This Court Should Dismiss Maxell’s Claims for Pre-Suit Indirect and
`Willful Infringement of the ’586 Patent For Not Plausibly Alleging
`Apple’s Knowledge of the Patent ........................................................................... 8
`
`This Court Should Dismiss Maxell’s Claims For Pre-Suit Indirect And
`Willful Infringement of All Asserted Patents For Failing To Plausibly
`Allege Knowledge of Infringement ...................................................................... 10
`
`VI.
`
`CONCLUSION ................................................................................................................. 12
`
`
`
`
`i
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`

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`
`TABLE OF AUTHORITIES
`
`Pages
`
`Cases
`
`Am. Vehicular Scis. LLC v. Mercedes-Benz U.S. Int’l, Inc.,
`No. 6:13-cv-307 MHS-JDL, 2014 U.S. Dist. LEXIS 184564 (E.D. Tex. Feb. 7, 2014) ............ 8
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ................................................................................................................ 4, 8
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) .................................................................................................................... 4
`
`Cevallos v. Silva,
`541 Fed. Appx. 390 (5th Cir. 2013) ............................................................................................ 4
`
`Commil USA, LLC v. Cisco Sys., Inc.,
`135 S. Ct. 1920 (2015) ...................................................................................................... 5, 9, 10
`
`Core Wireless Licensing S.A.R.L. v. Apple Inc.,
`No. 6:14-cv-752-JRG-JDL, 2015 U.S. Dist. LEXIS 107354 (E.D. Tex. Jul. 15, 2015) ............ 7
`
`Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005) .................................................................................................. 5
`
`Deere & Co. v. AGCO Corp.,
`No. 18-827-CFC, 2019 U.S. Dist. LEXIS 25885 (D. Del. Feb. 19, 2019) ............................... 12
`
`Diamond Grading Techs. v. Am. Gem Soc’y,
`No. 2:14-cv-1161-RWS-RSP, 2016 U.S. Dist. LEXIS 105697 (E.D. Tex. Mar. 30, 2016) ....... 9
`
`Global-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) .................................................................................................................... 5
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) ...................................................................................................... 5, 6, 11
`
`Hypermedia Navigation v. Google LLC,
`No. 18-CV-06137-HSG, 2019 U.S. Dist. LEXIS 56803 (N.D. Cal. Apr. 2, 2019) .................. 12
`
`In re Bill of Lading Transmission and Processing Sys. Patent Litig.,
`681 F.3d 1323 (Fed. Cir. 2012) .............................................................................................. 4, 5
`
`Nalco Co. v. Chem-Mod, LLC,
`883 F.3d 1337 (Fed. Cir. 2018) .................................................................................................. 5
`
`Preferential Networks IP, LLC v. AT&T Inc. Mobility, LLC,
`No. 2:16-cv-01374-JRG-RSP, 2017 U.S. Dist. LEXIS 140979 (E.D. Tex. July 15, 2017) ....... 6
`
`ii
`
`

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`Case 5:19-cv-00036-RWS Document 27 Filed 05/23/19 Page 4 of 18 PageID #: 324
`
`TABLE OF AUTHORITIES
`(continued)
`
`Pages
`
`Smit v. SXSW Holdings, Inc.,
`903 F.3d 522 (5th Cir. 2018) ...................................................................................................... 8
`
`State Indus. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985) .................................................................................................. 9
`
`Stragent, LLC v. BMW of N. Am., LLC,
`No. 6:16-cv-446-RWS-KNM, 2017 U.S. Dist. LEXIS 156084 (E.D. Tex. Mar. 3, 2017) ........ 7
`
`T-Rex Prop. AB v. Regal Entm’t Grp.,
`No. 6:16-cv-927-RWS-KNM, 2017 U.S. Dist. LEXIS 156859 (E.D. Tex. Aug. 31, 2017)
`(report and recommendation adopted, 2017 U.S. Dist. LEXIS 155605 (E.D. Tex. Sept. 22,
`2017)) ........................................................................................................................................ 11
`
`Välinge Innovation AB v. Halstead New Eng. Corp.,
`No. 16-1082-LPS-CJB, 2018 U.S. Dist. LEXIS 88696 (D. Del. May 29, 2018) ..................... 12
`
`Vita-Mix Corp. v. Basic Holding, Inc.,
`581 F.3d 1317 (Fed. Cir. 2009) .................................................................................................. 5
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .................................................................................................. 6
`
`Statutes
`
`35 U.S.C. § 271(b) .......................................................................................................................... 6
`
`
`
`iii
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`
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`I.
`
`INTRODUCTION
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`The Court should dismiss Maxell’s claims of indirect and willful infringement because
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`Maxell did not allege facts to plausibly show that Apple had the requisite “specific intent” to induce
`
`infringement or that Apple knew of its alleged infringement of the asserted patents before Maxell
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`filed this suit.1 Instead, repeating the same form for each of the ten asserted patents, Maxell
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`premises its indirect and willful infringement claims solely on two allegations: (1) Apple was “on
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`notice” of each asserted patent through pre-suit interactions with Maxell; and (2) Apple gave its
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`users online “instructions” regarding their general use of its accused products. These allegations
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`amount to little more than conclusory statements that do not meet Maxell’s burden to plead indirect
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`and pre-suit willful infringement.
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`First, the Complaint fails to allege facts sufficient to support a reasonable inference that
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`Apple specifically intended to cause others to infringe Maxell’s patents—a required element of
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`induced infringement. Maxell alleges only that Apple “instructs its customers through at least user
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`guides or websites.” See, e.g., Complaint at ¶ 27. These allegations, even if true, do not explain
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`how Apple’s “user guides or websites” reveal a specific intent to cause infringement. Rather, they
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`only demonstrate Apple’s intent to market and support its products. Thus, Maxell has not stated a
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`valid induced infringement claim under Rule 12(b)(6).
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`Second, for the ’586 patent, the Complaint fails to plausibly allege that Apple knew—
`
`before this lawsuit—that this patent even existed. Specifically, Maxell’s alleged pre-suit
`
`interactions with Apple all predate the ’586 patent’s issuance, yet the Complaint alleges that Apple
`
`
`1 The patents asserted in this case are Patent Nos. 6,748,317 (“the ’317 patent”); 6,580,999 (“the
`’999 patent”); 8,339,493 (“the ’493 patent”); 7,116,438 (“the ’438 patent”); 6,408,193 (“the ’193
`patent”); 10,084,991 (“the ’991 patent”); 6,928,306 (“the ’306 patent”); 6,329,794 (“the ’794
`patent”); 10,212,586 (“the ’586 patent”); and 6,430,498 (“the ’498 patent”) (collectively, “the
`asserted patents”).
`
`1
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`

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`
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`had “notice” of this patent four months before the patent even issued. As the Federal Circuit and
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`this Court have found, an accused infringer cannot receive the requisite notice of a not-yet-issued
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`patent to support a willfulness claim. Thus, Maxell’s allegations cannot support a reasonable
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`inference that Apple knew of the ’586 patent before this case. Maxell’s failure to plausibly allege
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`Apple knew about the ’586 patent warrants dismissal of its claims for pre-suit willful and indirect
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`infringement of that patent.
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`Third, Maxell does not support its remaining indirect and willful infringement claims with
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`any allegations that Apple had pre-suit knowledge of alleged infringement of any asserted patent—
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`a required element of both claims. The Complaint alleges only that Apple “has been on notice of”
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`each asserted patent (see, e.g. id. at ¶ 30); lacking is any allegation showing how Apple was
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`supposed to have known that its products infringed any asserted patent. Without such allegations,
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`all of Maxell’s claims for pre-suit indirect and willful infringement fail.
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`Because the Complaint does not meet the plausibility test for surviving a motion to dismiss
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`under Fed. R. Civ. P. 12(b)(6), this Court should dismiss Maxell’s claims of induced infringement
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`and pre-suit contributory and willful infringement.
`
`II.
`
`STATEMENT OF THE ISSUES
`
`1.
`
`Whether Maxell’s claims for induced infringement should be dismissed because
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`they include only conclusory allegations and fail to plausibly allege how Apple “specifically
`
`intended” its customers to infringe.
`
`2.
`
`Whether Maxell’s claims for induced, contributory, and willful infringement
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`should be dismissed because they include only conclusory allegations of pre-suit notice for all ten
`
`asserted patents and fail to plausibly allege knowledge of infringement or knowledge of even the
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`existence of the ’586 patent itself.
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`2
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`

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`III. BACKGROUND
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`Maxell accuses Apple of direct, induced, contributory, and willful infringement of ten
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`patents. See Complaint at ¶¶ 14-162. Each count of induced infringement repeats the same
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`formula. First, the Complaint alleges broadly that “Apple’s customers who purchase devices and
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`components thereof and operate such devices and components in accordance with Apple’s
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`instructions directly infringe one or more claims of the [asserted patent] in violation of 35 U.S.C.
`
`§ 271.” Id. at ¶¶ 27, 41, 56, 69, 86, 99, 112, 129, 142, 157. The Complaint then alleges in
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`conclusory fashion that “Apple instructs its customers through at least user guides or websites,”
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`and, for all ten asserted patents, provides blanket citations to both the general Apple Manuals
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`website and a similarly broad landing page for the Maps, iPhone cameras, or other general
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`functionality. See, e.g. id. at ¶ 27 (broadly citing the Maps landing page as purported evidence of
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`induced infringement of the ’317 patent). The Complaint does not identify any specific
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`information in any of the cited “user guides or websites” that allegedly demonstrates Apple’s
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`specific intent to cause infringement.
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`As to pre-suit knowledge, the Complaint alleges that Apple and Maxell had “numerous
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`meetings and interactions” from “at least June 2013” until “as late as late 2018.” Id. at ¶ 5. The
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`Complaint also vaguely alleges that these meetings involved discussions of “Maxell’s patents and
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`allegations,” but neither identifies any asserted patent that was discussed at these meetings, nor
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`specifies what infringement allegations and accused products the parties supposedly discussed, if
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`any. Id. Based on these vague allegations, each infringement count includes the same boilerplate
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`paragraph stating that “Apple has been on notice of the [asserted patent]” since at least a given
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`date and that “Apple will thus have known and intended (since receiving such notice), that its
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`continued actions would actively induce and contribute to actual infringement of the [asserted
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`claims].” Id. at ¶¶ 30, 44, 59, 72, 89, 102, 115, 132, 145, 160; see also, e.g., id. at ¶ 30 (alleging
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`3
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`

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`
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`that “Apple has been on notice of the ’317 Patent since, at least, June 25, 2013”). Maxell pleads
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`no facts regarding how it gave Apple notice of any asserted patent, and no facts showing whether
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`or how Maxell notified Apple that any of its products infringed any of the asserted patents.
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`Lastly, the Complaint includes a boilerplate paragraph for each count alleging that Apple’s
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`infringement was willful. Maxell alleges that “Apple undertook and continued its infringing
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`actions despite an objectively high likelihood that such activities infringed the [asserted patent]”
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`and that “since [the alleged notice date], Apple has been aware of an objectively high likelihood
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`that its actions constituted and continue to constitute infringement of the [asserted patent].” Id. at
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`¶¶ 31, 45, 60, 73, 90, 103, 116, 133, 146, 161. Based solely on the alleged notice date and these
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`formulaic allegations, Maxell concludes that “Apple willfully infringes” each asserted patent.” Id.
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`IV.
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`LEGAL STANDARD
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`Fed. R. Civ. P. 8 requires a complaint to include “a short and plain statement of the claim
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`showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the
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`. . . claim is and the grounds upon which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 545
`
`(2007); see also Ashcroft v. Iqbal, 556 U.S. 662, 684-85 (2009). A complaint must allege
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`“sufficient factual matter, accepted as true, to ‘state a claim that is plausible on its face.’” Iqbal,
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`556 U.S. at 678 (quoting Twombly, 550 U.S. at 570). “A claim has facial plausibility when the
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`pleaded factual content allows the court to draw the reasonable inference that the defendant is
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`liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). Dismissing a claim is
`
`proper if its allegations only allow the court to infer “the mere possibility of misconduct.” Cevallos
`
`v. Silva, 541 Fed. Appx. 390, 392 (5th Cir. 2013) (citing Iqbal, 556 U.S. at 679). Motions to
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`dismiss for failure to state a claim are governed by regional circuit law. In re Bill of Lading
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`Transmission and Processing Sys. Patent Litig., 681 F.3d 1323, 1331 (Fed. Cir. 2012).
`
`4
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`

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`A claim for induced infringement under 35 U.S.C. § 271(b) must include “a showing that
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`the alleged inducer knew of the patent, knowingly induced the infringing acts, and possessed a
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`specific intent to encourage another’s infringement of the patent.” Vita-Mix Corp. v. Basic
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`Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009). To be liable for induced infringement, the
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`defendant must “[know] that the induced acts constitute patent infringement.” Global-Tech
`
`Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011). To survive a motion to dismiss, the
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`complaint must: (1) adequately plead direct infringement by defendant’s customers; (2) contain
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`facts plausibly showing that defendant specifically intended for its customers to infringe the
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`asserted patent; and (3) contain facts plausibly showing that defendant knew that the customer’s
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`acts constituted infringement. See Bill of Lading, 681 F.3d at 1339.
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`Similarly, a plaintiff claiming contributory infringement under 35 U.S.C. § 271(c) must
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`prove (1) an act of direct infringement; (2) that the defendant “knew that the combination for which
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`its components were especially made was both patented and infringing,” and (3) that the
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`components have “no substantial non-infringing uses.” Cross Med. Prods., Inc. v. Medtronic
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`Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005). “[C]ontributory infringement requires
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`knowledge of the patent in suit and knowledge of patent infringement.” Nalco Co. v. Chem-Mod,
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`LLC, 883 F.3d 1337, 1356-57 (Fed. Cir. 2018) (quoting Commil USA, LLC v. Cisco Sys., Inc., 135
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`S. Ct. 1920, 1926 (2015)).
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`A claim for willful patent infringement must allege that infringement was “intentional or
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`knowing.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1926 (2016). “The sort of
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`conduct warranting enhanced damages has been variously described . . . as willful, wanton,
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`malicious, bad-faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of
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`a pirate.” Id. at 1932. Willful infringement requires knowledge of the allegedly infringed patent,
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`5
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`and that “the infringer acted despite an objectively high likelihood that its actions constituted
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`infringement of a valid patent.” Id. at 1930; see also id. at 1933 (“culpability is generally measured
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`against the knowledge of the actor”); WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir.
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`2016) (“Knowledge of the patent alleged to be willfully infringed continues to be a prerequisite to
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`enhanced damages.”); see also Preferential Networks IP, LLC v. AT&T Inc. Mobility, LLC, No.
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`2:16-cv-01374-JRG-RSP, 2017 U.S. Dist. LEXIS 140979 (E.D. Tex. July 15, 2017) (dismissing
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`plaintiff’s claims for pre-complaint willful infringement where there were no facts alleged showing
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`defendants had pre-suit notice of the asserted patents).
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`V.
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`ARGUMENT
`
`A.
`
`This Court Should Dismiss Maxell’s Induced Infringement Claims For
`Failing To Plausibly Allege Apple’s Specific Intent
`
`The Court should dismiss Maxell’s inducement claims because Maxell did not plead facts
`
`plausibly showing that Apple had the required “specific intent” to induce infringement.2 See 35
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`U.S.C. § 271(b); Bill of Lading, 681 F.3d at 1339. Maxell’s broad, passing references to thousands
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`of pages of user manuals and websites cannot support a reasonable inference that Apple intended
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`to cause its customers to infringe Maxell’s patents.
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`The Complaint neither identifies what parts of Apple’s manuals and websites allegedly
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`demonstrate an intent to infringe, nor explains how such materials support Maxell’s infringement
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`claims. The Complaint repeats the same boilerplate paragraph for all ten counts of alleged
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`inducement stating that “Apple instructs its customers through at least user guides or websites”
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`and citing broadly to the Apple website. See Complaint at ¶¶ 27, 41, 56, 69, 86, 99, 112, 129, 142,
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`157. With respect to the ’317 patent, for example, the Complaint relies on, as the alleged “user
`
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`2 Maxell’s inducement claims also fail for the second, independent reason that Maxell fails to
`plead facts plausibly supporting that Apple knew of its or its customers’ alleged infringement of
`any of the asserted patents. See Sections V.B-V.C, infra.
`
`6
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`

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`
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`guides or websites,” cites to: (1) the “Manuals” landing page on the Apple website, which has
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`links to instructions for virtually every product sold by Apple, spanning thousands of pages of
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`material; and (2) the “Maps” landing page on the Apple website, which contains general marketing
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`information for the Maps app and is not tied to any particular product or usage. Id. at ¶ 27. The
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`Complaint never explains what parts of any of these materials specifically direct customers to use
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`the accused products in an infringing manner. These broad-brush citations do not make plausible
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`Maxell’s allegation that Apple specifically intended customers to infringe the asserted patents.
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`Courts in this district routinely dismiss inducement claims premised on general citations to
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`user manuals and websites. For example, in Core Wireless Licensing S.A.R.L. v. Apple Inc., the
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`Court found similar allegations to be insufficient under the Iqbal/Twombly standard. See No. 6:14-
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`cv-752-JRG-JDL, 2015 U.S. Dist. LEXIS 107354, at *12-13 (E.D. Tex. Jul. 15, 2015). The Core
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`Wireless Court held that citations to “instructive materials and information concerning operation
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`and the use of the accused products” did not satisfy the specific intent element of inducement
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`because the plaintiff failed “to alleged any facts identifying, even at a basic level, which
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`functionalities of the accused products are at issue, or how the instructions direct customers to use
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`those products in an infringing manner.” Id. The complaint’s general citations to user guides, the
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`court found, “fail[ed] to provide Apple with adequate notice as to its induced infringement
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`allegations.” Id. at *13. Similarly, in Stragent, LLC v. BMW of N. Am., LLC, the Court dismissed
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`induced infringement allegations where the plaintiff “only allege[d] generic statements that the
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`Defendants provide customers with infringing devices along with instructions” but “faile[d] to
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`allege how the instructions direct customers to use those products in an infringing manner.” No.
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`6:16-cv-446-RWS-KNM, 2017 U.S. Dist. LEXIS 156084, at *25 (E.D. Tex. Mar. 3, 2017). In
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`Am. Vehicular Scis. LLC v. Mercedes-Benz U.S. Int’l, Inc., the Court also dismissed claims for
`
`7
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`
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`induced infringement where the plaintiff alleged only that the defendant provided “‘detailed
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`explanations, instructions, and information’ concerning the alleged products,” but failed to allege
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`how such instructions “directed customers to act in an infringing manner.” No. 6:13-cv-307 MHS-
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`JDL, 2014 U.S. Dist. LEXIS 184564, at *11 (E.D. Tex. Feb. 7, 2014). Maxell’s inducement claims
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`fail for the same reason. The Complaint includes nothing more than citations to Apple’s user
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`guides and websites without alleging how any of these instructions directed Apple’s customers to
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`use the accused products in an allegedly infringing manner.
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`Because the Complaint fails to plausibly allege Apple’s specific intent to induce
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`infringement, the Court should dismiss each of Maxell’s induced infringement claims.
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`B.
`
`This Court Should Dismiss Maxell’s Claims for Pre-Suit Indirect and Willful
`Infringement of the ’586 Patent For Not Plausibly Alleging Apple’s
`Knowledge of the Patent
`
`The Complaint does not plausibly allege that Apple knew of the ’586 patent before this
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`lawsuit. Maxell alleges that Apple “has been on notice of the ’586 patent since, at least, October
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`19, 2018.” Complaint at ¶ 145.3 This is facially implausible because the ’586 patent did not issue
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`until February 19, 2019—four months after the alleged notice. See id. at ¶ 136 and Ex. 9. Apple
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`could not have known about the ’586 patent months before it even existed. Thus, Maxell’s
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`allegation of pre-suit notice is not “plausible on its face.” Ashcroft, 556 U.S. at 678; see also Smit
`
`v. SXSW Holdings, Inc., 903 F.3d 522, 528 (5th Cir. 2018) (“[W]hen an ‘allegation is contradicted
`
`by the contents of an exhibit attached to the pleading, then indeed the exhibit and not the allegation
`
`controls.’”) (citation omitted). This lack of pre-suit notice precludes Maxell’s claims for pre-suit
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`induced, contributory, and willful infringement of the ’586 patent.
`
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`3 The Complaint also alleges that pre-suit communication between Maxell and Apple ended by
`“late 2018.” Complaint at ¶ 5.
`
`8
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`Maxell cannot avoid this deficiency by arguing that it provided Apple notice of the
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`application that later issued as the ’586 patent. Even if Maxell notified Apple of the pending
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`application—which the Complaint does not allege—such notification would be insufficient to
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`establish pre-suit notice of the patent itself. As this Court recognized in Diamond Grading Techs.
`
`v. Am. Gem Soc’y, “[t]he Federal Circuit has held that mere notice of the pendency of a patent
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`application is not sufficient to support a finding of willful infringement of a subsequently-issued
`
`patent” because “[f]iling an application is no guarantee any patent will issue and a very substantial
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`percentage of applications never result in patents.” No. 2:14-cv-1161-RWS-RSP, 2016 U.S. Dist.
`
`LEXIS 105697, at *5-6 (E.D. Tex. Mar. 30, 2016) (quoting State Indus. v. A.O. Smith Corp., 751
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`F.2d 1226, 1236 (Fed. Cir. 1985)). Diamond Grading held that a plaintiff did not plausibly plead
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`pre-suit notice of an asserted reissue patent by alleging notice only of the original patent from
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`which it stemmed, noting that precedent disallowing patent applications to serve as the basis of
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`notice of later-issued patent was analogous. Id. Moreover, as this Court held, “Plaintiff’s
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`allegation that the scope of the [asserted reissue patent’s] claims turned out to be similar or even
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`identical to the [original patent’s claims] is beside the point” because “[p]leading willful
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`infringement requires a plausible allegation of subjective knowledge—that Defendants were on
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`notice of the [asserted reissue patent].” Id. at *6-7.
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`Under Diamond Grading, Apple could not have received notice of the ’586 patent by
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`October 19, 2018—four months before its issuance. Thus, Maxell has not plead facts sufficient to
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`show that Apple had the requisite knowledge of the ’586 patent to willfully infringe it. Id. This
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`similarly precludes Maxell’s claims for both induced and contributory infringement of that patent.
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`See, e.g., Commil USA, 135 S. Ct. at 1922 (“contributory infringement . . ., like inducement
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`liability, requires knowledge of the patent in suit”). Without factual allegations demonstrating pre-
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`9
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`Case 5:19-cv-00036-RWS Document 27 Filed 05/23/19 Page 14 of 18 PageID #: 334
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`suit knowledge of the ’586 patent itself, the Court should dismiss Maxell’s claims for pre-suit
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`induced, contributory, and willful infringement of that patent.4
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`C.
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`This Court Should Dismiss Maxell’s Claims For Pre-Suit Indirect And
`Willful Infringement of All Asserted Patents For Failing To Plausibly Allege
`Knowledge of Infringement
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`The Complaint also fails to allege sufficient facts demonstrating that Apple knew of its
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`alleged infringement of any of the asserted patents. Maxell alleges in its ten counts of infringement
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`that Apple “has been on notice of” each asserted patent since a given date and has induced,
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`contributed to, and willfully infringed each asserted patent since that date. See, e.g., Complaint at
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`¶¶ 30-31 (alleging that Apple “has been on notice of the ’317 patent since, at least, June 25, 2013,”
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`and has indirectly and willfully infringed since the alleged notice date). Crucially, however, the
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`Complaint never alleges how Apple was ever placed on notice of any alleged infringement of any
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`asserted patent. Other than baldly stating the alleged “notice” date for each asserted patent and
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`vaguely referencing “meetings and interactions” between the two companies (see id. at ¶ 5),
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`Maxell does not state how it provided any notice of infringement for each of the asserted patent to
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`Apple. The failure to allege how Apple knew of its or its customers’ alleged infringement
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`precludes Maxell’s claims for at least pre-suit induced, contributory, and willful infringement of
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`all ten asserted patents.
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`Claims for induced, contributory, and willful infringement require not only that the
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`defendant knew of an asserted patent but also that the defendant knew of the alleged infringement
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`of the asserted patent. See, e.g., Commil USA, 135 S. Ct. at 1926 (holding that “contributory
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`infringement . . ., like inducement liability, requires knowledge of the patent in suit and knowledge
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`4 The Court should also dismiss Maxell’s allegations of pre-suit induced, contributory, and
`willful infringement of the ’586 patent for the independent reason that Maxell failed to plead pre-
`suit knowledge of alleged infringement of the ’586 patent. See Section V.C, infra.
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`10
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`Case 5:19-cv-00036-RWS Document 27 Filed 05/23/19 Page 15 of 18 PageID #: 335
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`of patent infringement”) (emphasis added); Halo Elecs., 136 S. Ct. at 1930 (requiring, for willful
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`infringement, a showing that “the infringer acted despite an objectively high likelihood that its
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`actions constituted infringement of a valid patent”). Here, the required element that Apple knew
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`(or should have known) of the alleged infringement is missing from Maxell’s claims for these three
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`types of pre-suit infringement. Although Maxell alleges that Apple “was on notice of” each
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`asserted patent by a given date, it fails to allege if or how Maxell ever made Apple aware of what
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`activities or products allegedly infringed. And while Maxell alleges that it had “meetings and
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`interactions” with Apple to discuss “Maxell’s patents,” these allegations do not specify which
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`asserted patent, if any, was discussed at such meetings, nor what infringement allegations, if any,
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`were identified to Apple at these meetings. Thus, the Complaint’s allegations cannot support a
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`reasonable inference that Apple possessed the requisite mental state—i.e., knowledge of
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`infringement—to trigger liability for induced, contributory, or willful infringement for each of the
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`ten asserted patents.
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`In T-Rex Prop. AB v. Regal Entm’t Grp., the plaintiff alleged that the defendant had
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`“constructive knowledge or has been willfully blind to its infringing” but did not allege “how or
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`when [defendant] acquired this constructive knowledge.” No. 6:16-cv-927-RWS-KNM, 2017
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`U.S. Dist. LEXIS 156859, at *25-26 (E.D. Tex. Aug. 31, 2017) (report and recommendation
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`adopted, 2017 U.S. Dist. LEXIS 155605 (E.D. Tex. Sept. 22, 2017)). The Court held that the
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`plaintiff “fail[ed] to state a claim for pre-suit infringement.” Id. Maxell, too, has alleged only the
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`legal conclusions of willful and indirect infringement in each of its ten counts, without alleging
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`any facts regarding how Apple ever acquired knowledge of infringement before the lawsuit.
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`Many courts have found that vague allegations of pre-suit notice cannot support willful and
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`indirect infringement claims. See, e.g., Deere & Co. v. AGCO Corp., No. 18-827-CFC, 2019 U.S.
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`11
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`Case 5:19-cv-00036-RWS Document 27 Filed 05/23/19 Page 16 of 18 PageID #: 336
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`
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`Dist. LEXIS 25885, at *15-16) (D. Del. Feb. 19, 2019) (dismissing claims for willful and induced
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`infringement where the complaint alleged that the defendants received a pre-suit notice letter but
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`did not allege that the letter “informed Defendants that [the accused products] infringe[d]” the
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`patents-in-suit); Välinge Innovation AB v. Halstead New Eng. Corp., No. 16-1082-LPS-CJB, 2018
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`U.S. Dist. LEXIS 88696, at *35-36 (D. Del. May 29, 2018) (dismissing claims for willful
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`infringement and noting the requirement that plaintiff “plead sufficient facts . . . to plausibly
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`demonstrate that . . . Defendants were on notice of it is that they were said to infringe the asserted
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`patents.”); Hypermedia Navigation v. Google LLC, No. 18-CV-06137-HSG, 2019 U.S. Dist.
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`LEXIS 56803, at *9-10 (N.D. Cal. Apr. 2, 2019) (finding allegation of pre-suit letter insufficient
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`to support willful and induced infringement claims). Maxell’s Complaint does not plausibly allege
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`that it provided pre-suit notice to Apple of how it was alleged to infringe any of the asserted
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`patents, and therefore the Court should dismiss its claims for pre-suit induced, contributory, and
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`willful infringement.
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`VI. CONCLUSION
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`For the foregoing reasons, Apple respectfully requests the Court dismiss Maxell’s claims
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`for pre-suit willful and contributory infringement of all ten asserted