Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 1 of 21 PageID #: 350
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`PLAINTIFF MAXELL, LTD.’S OPPOSITION TO DEFENDANT APPLE INC.’S
`MOTION FOR PARTIAL DISMISSAL OF PLAINTIFF’S COMPLAINT FOR FAILURE
`TO STATE A CLAIM
`
`

`

`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 2 of 21 PageID #: 351
`
`TABLE OF CONTENTS
`
`I. 
`    MAXELL’S RESPONSE TO STATEMENT OF ISSUES ................................................. 2 
`LEGAL STANDARD .......................................................................................................... 2 
`II. 
`A.  Willful Infringement ........................................................................................................ 3 
`B. 
`Induced Infringement ....................................................................................................... 3 
`III.  ARGUMENT ....................................................................................................................... 4 
`A.  Maxell has Plausibly Alleged Specific Intent Sufficient to Maintain its Indirect
`Infringement Claims. ....................................................................................................... 4 
`B.  Maxell’s Claims for Pre-Suit Indirect and Willful Infringement of the ’586 Patent Are
`Plausible and Should Not Be Dismissed. ......................................................................... 7 
`C.  Maxell Has Pled Notice of the Asserted Patents Sufficient to Sustain Its Pre-Suit
`Indirect and Willful Infringement Claims. ..................................................................... 10 
`If the Court Deems Necessary, Leave to Amend is the Appropriate Remedy. .............. 13 
`D. 
`IV.  CONCLUSION .................................................................................................................. 14 
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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 3 of 21 PageID #: 352
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................2
`
`Bell Atlantic Corp. v. Twombly,
`550 U.S. 544 (2007) .............................................................................................................2, 12
`
`Biosonix, LLC v. Hydrowave, LLC,
`No. 4:16-cv-139, 2016 U.S. Dist. LEXIS 189970 (E.D. Tex. Aug. 10, 2016) ..........................6
`
`Blitzsafe Tex., LLC v. Volkswagen Group of Am., Inc.,
`No. 2:15-cv-1274-JRG-RSP, 2016 U.S. Dist. LEXIS 124144 (E.D. Tex. Aug.
`19, 2016) ....................................................................................................................................9
`
`Bond St. Ltd, LLC v. Liess,
`No. 4:12-CV-755, 2014 U.S. Dist. LEXIS 42989 (E.D. Tex. Mar. 31, 2014) ........................15
`
`Bowlby v. City of Aberdeen,
`681 F.3d 215 (5th Cir. 2012) .....................................................................................................2
`
`Content Guard Holdings, Inc. v. Amazon.com, Inc.,
`C.A. No. 2:13-CV-1112-JRG, 2015 U.S. Dist. LEXIS 39807 (E.D. Tex. Mar.
`30, 2015) ..................................................................................................................................14
`
`Copan Italia S.P.A. v. Puritan Med. Prods. Co. LLC,
`No. 1:18-cv-00218-JDL, 2018 U.S. Dist. LEXIS 191927 (D. Me. Nov. 9,
`2018) ........................................................................................................................................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. July
`15, 2015) ................................................................................................................................3, 7
`
`Deere & Co. v. AGCO Corp.,
`No. 18-827-CFC, 2019 U.S. Dist. LEXIS 25885 (D. Del. Feb. 19, 2019) ..............................15
`
`Diamond Grading Techs. v. Am. Gem Soc’y,
`No. 2:14-cv-1161, 2016 U.S. Dist. LEXIS 105697 (E.D. Tex. Mar. 30, 2016) ........................8
`
`Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
`No. 2:15-CV-37, 2016 U.S. Dist. LEXIS 95584 (E.D. Tex. Mar. 30, 2016) ..........................12
`
`Glob. Sessions, LP v. JPMorgan Chase & Co.,
`No. A-13-CA-688-SS, 2013 WL 12086369 (W.D. Tex. Nov. 18, 2013) ..................................3
`3
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 4 of 21 PageID #: 353
`
`Glob.-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) ...................................................................................................................4
`
`Hypermedia Navigation v. Google LLC,
`No. 18-cv-6137, 2019 U.S. Dist. LEXIS 56803 (N.D. Cal. Apr. 2, 2019) ..............................15
`
`Mitutoyo Corp. v. Cent. Purchasing, LLC,
`499 F.3d 1284 (Fed. Cir. 2007)............................................................................................3, 13
`
`MobileMedia Ideas LLC v. HTC Corp.,
`No. 2:10-cv-112-TJW, 2011 U.S. Dist. LEXIS 104892 (E.D. Tex. Sept. 15,
`2011) ........................................................................................................................................13
`
`Pecorino v. Vutec Corp.,
`934 F. Supp. 2d 422 (E.D.N.Y. 2012) .................................................................................3, 14
`
`Power Integrations, Inc. v. Fairchild Semiconductor International, Inc.,
`843 F.3d 1315 (Fed. Cir. 2016)..................................................................................................3
`
`Salazar v. HTC Corp.,
`No. 2:16-cv-1096, 2018 U.S. Dist. LEXIS 41934 (E.D. Tex. Feb. 14, 2018) .....................4, 14
`
`Shiley, Inc. v. Bentley Labs., Inc.,
`794 F.2d 1561 (Fed. Cir. 1986)..................................................................................................9
`
`SiOnyx, LLC v. Hamamatsu Photonics K.K.,
`330 F. Supp. 3d 574 (D. Mass. 2018) ......................................................................................10
`
`Sleep No. Corp. v. Sizewise Rentals, LLC,
`CV 18-00356-AB, 2018 WL 5263065 (C.D. Cal. June 26, 2018) ............................................5
`
`State Indus. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985)..............................................................................................8, 9
`
`Summer v. Land & Leisure, Inc,
`664 F.2d 965 (5th Cir. 1981) ...................................................................................................15
`
`T-Rex Prop. AB v. Regal Entm’t Grp.,
`No. 6:16-cv-927, 2017 U.S. Dist. LEXIS 156859 (E.D. Tex. Aug. 31, 2017) ........................14
`
`Uniloc USA, Inc. v. Avaya Inc.,
`No. 6:15-CV-1168-JRG, 2016 U.S. Dist. LEXIS 181826 (E.D. Tex. May 13,
`2016) ..........................................................................................................................................7
`
`Warsaw Orthopedic, Inc. v. NuVasive, Inc.,
`824 F.3d 1344 (Fed. Cir. 2016)..................................................................................................4
`
`
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 5 of 21 PageID #: 354
`
`WordCheck Tech, LLC. v. Alt-N Techs., Ltd.,
`No. 6:10-CV-457, 2012 U.S. Dist. LEXIS 189071 (E.D. Tex. July 17, 2012) ...................3, 13
`
`Other Authorities
`
`Fed. R. Civ. P. 15(a)(2) ..................................................................................................................15
`
`
`
`5
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`

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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 6 of 21 PageID #: 355
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`For almost six years prior to Maxell’s filing of the Complaint, the parties engaged in
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`negotiations over the patents in Maxell’s portfolio—including the patents asserted in this case.
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`As set forth in the Complaint, the parties held “numerous meetings,” specifically to discuss
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`“infringement of [the asserted] patents.” Complaint at ¶ 5. The Complaint is clear that the
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`meetings “included Apple’s representatives,” and that those representatives were “provided with
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`detailed information regarding Maxell’s patents, the developed technology, and Apple’s ongoing
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`use of this patented technology.” Id. Moreover, at the request of Apple’s representatives, Maxell
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`even provided “detailed explanations regarding Maxell’s patents and allegations.” Id.
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`Maxell engaged in this years-long negotiation because it genuinely believed the parties
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`could reach a mutually beneficial solution. Id. It even “considered a potential business
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`transaction and continued to answer multiple inquiries from Apple over the course of years,
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`including communicating with Apple as recently as late 2018.” Id. Ultimately, Apple’s refusal to
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`take a license forced Maxell to file its Complaint.
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`Apple is well aware that it received detailed analyses of the asserted patents and the
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`infringement allegations throughout the negotiations, meetings and exchanges over the past six
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`years. The Complaint references the extensive negotiations history between the parties (see id. at
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`¶ 5) and then, for each asserted patent, identifies the specific meetings or exchanges, including
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`the specific date, during which Maxell identified each of the asserted patents and Apple’s
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`infringement thereof. See id. at ¶¶ 30-31, 44-45, 59-60, 72-73, 89-90, 102-103, 115-116, 132-
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`133, 145-146, 160-161. Yet, Apple argues that the Complaint should be dismissed on the basis
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`that it is implausible that Apple received notice of the patents and infringement allegations prior
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`to the Complaint. That contention is unfounded.
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`
`
`1
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`

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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 7 of 21 PageID #: 356
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`Accepting Maxell’s allegations as true and construing all inferences in Maxell’s favor,
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`the pleaded allegations unquestionably permit a plausible inference that Apple knew of the
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`patents and of how it was infringing.
`
`I.
`
`MAXELL’S RESPONSE TO STATEMENT OF ISSUES
`
`Maxell does not dispute that one issue for this Court to decide is whether Maxell’s claims
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`for induced infringement should be dismissed. With respect to Apple’s second stated issue, the
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`issue for this Court to decide is not whether Maxell’s claims for induced, contributory, and
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`willful infringement should be dismissed in full for each patent based on an alleged failure to
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`plausibly allege pre-suit knowledge of infringement or knowledge of existence of the ’586
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`Patent. The second issue is whether Maxell’s claims for pre-suit indirect and willful infringement
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`should be dismissed on these grounds. Maxell further objects to any characterization within
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`Apple’s statement of the issues that Maxell’s claims are conclusory or fail to plausibly allege
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`specific intent, knowledge of infringement, or knowledge of the existence of the ’586 Patent.
`
`II.
`
`LEGAL STANDARD
`
`When considering a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6),
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`the Court must assume all well-pleaded facts are true and view those facts in the light most
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`favorable to the plaintiff. Bowlby v. City of Aberdeen, 681 F.3d 215, 219 (5th Cir. 2012). To
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`survive a motion to dismiss, a plaintiff need merely plead enough to state a claim that is
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`“plausible.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). Plausible does not require
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`that liability is probable. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Rather, it merely requires
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`“factual content that allows the court to draw the reasonable inference that the defendant is liable
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`for the misconduct alleged.” Id.
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`2
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`

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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 8 of 21 PageID #: 357
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`A. Willful Infringement
`
`“[T]he bar for pleading willful infringement is not high.” WordCheck Tech, LLC. v. Alt-N
`
`Techs., Ltd., No. 6:10-CV-457, 2012 U.S. Dist. LEXIS 189071, at *6 (E.D. Tex. July 17, 2012);
`
`accord Glob. Sessions, LP v. JPMorgan Chase & Co., No. A-13-CA-688-SS, 2013 WL
`
`12086369, at *3 (W.D. Tex. Nov. 18, 2013). Indeed, courts have held that no more is required
`
`than plausible allegations that the defendants “received notice of the patent-in-suit and that their
`
`continued alleged infringement is … reckless.” WordCheck Tech, 2012 U.S. Dist. LEXIS
`
`189071 at *6 (applying the more stringent Seagate test, now abrogated). Accordingly, the
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`Federal Circuit has held that it is “more than sufficient” for a patentee to allege pre-suit
`
`knowledge of the patent along with allegations that the accused infringement has been “willful
`
`and deliberate.” Mitutoyo Corp. v. Cent. Purchasing, LLC, 499 F.3d 1284, 1290 (Fed. Cir. 2007);
`
`see also Pecorino v. Vutec Corp., 934 F. Supp. 2d 422, 449–50 (E.D.N.Y. 2012) (denying
`
`motion to dismiss willful infringement claim because “all of the cases that this Court has
`
`reviewed appear to only require allegations of direct infringement and actual knowledge of the
`
`existence of the patent”).
`
`B.
`
`Induced Infringement
`
`To survive a motion to dismiss a count of induced infringement, the complaint must: (1)
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`adequately plead direct infringement by defendants’ customers; (2) contain facts plausibly
`
`showing that defendant specifically intended for its customers to perform the infringing acts; and
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`(3) contain facts plausibly showing that defendant knew that those acts constituted infringement.
`
`Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 6:14–CV–752–JRG–JDL, 2015 U.S. Dist.
`
`LEXIS 107354, at *10 (E.D. Tex. July 15, 2015); c.f. Power Integrations, Inc. v. Fairchild
`
`Semiconductor International, Inc., 843 F.3d 1315, 1332 (Fed. Cir. 2016) (detailing the
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`substantive standards for induced infringement).
`3
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`

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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 9 of 21 PageID #: 358
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`“[W]illful blindness can satisfy the knowledge requirement for active inducement under
`
`§ 271(b) . . . ., even in the absence of actual knowledge.” Warsaw Orthopedic, Inc. v. NuVasive,
`
`Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016). Thus “defendants cannot escape [liability] by
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`deliberately shielding themselves from clear evidence of critical facts that are strongly suggested
`
`by the circumstances.” Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011).
`
`At the pleading stage, allegations sufficient to satisfy the knowledge requirements of
`
`willful infringement are also sufficient to satisfy those of induced infringement. See Salazar v.
`
`HTC Corp., No. 2:16-cv-1096, 2018 U.S. Dist. LEXIS 41934, at *5 (E.D. Tex. Feb. 14, 2018)
`
`(“If willful infringement is plausible…, the addition of plausible allegations about a defendant’s
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`encouragement of others to act in a manner prohibited by 35 U.S.C. § 271(a) must render
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`induced infringement plausible.”)
`
`III. ARGUMENT
`A. Maxell has Plausibly Alleged Specific Intent Sufficient to Maintain its
`Indirect Infringement Claims.
`
`Apple’s first argument is that Maxell has not sufficiently alleged inducement because the
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`Complaint does not contain facts plausibly showing that Apple intended for its customers to
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`perform the infringing acts. Dkt. 27 (“Mot.”) 6-8. More specifically, Apple contends that “[t]he
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`Complaint neither identifies what parts of Apple’s website or manuals allegedly demonstrate an
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`intent to infringe, nor explains how such materials support Maxell’s infringement claims.” Id. at
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`6.
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`This argument is just factually incorrect. Contrary to Apple’s assertions, the Complaint
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`identifies exactly which pages on Apple’s website provide the offending instructions for each of
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`the accused products. The Complaint provides different links to different web pages depending
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`on which patent and accused functionality is being addressed. See Complaint at ¶¶ 27, 41, 56, 69,
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`4
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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 10 of 21 PageID #: 359
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`86, 99, 112, 129, 142, and 157. The instructions identified on each of these specific webpages are
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`tailored to each patent. Thus, Apple has no basis to assert that the Complaint fails to “identif[y]
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`what parts of Apple’s website or manuals allegedly demonstrate an intent to [induce]
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`infringe[ment].” Mot. 6.
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`Regarding how these instructions induce infringement, the answer is self-evident, and it is
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`in the Complaint: “Apple’s customers who purchase devices and components thereof and operate
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`such devices and components in accordance with Apple’s instructions directly infringe one or
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`more claims.” Complaint at ¶¶ 27, 41, 56, 69, 86, 99, 112, 129, 142, and 157. These allegations
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`alone are sufficient to state a claim for induced infringement. See Sleep No. Corp. v. Sizewise
`
`Rentals, LLC, CV 18-00356-AB (SPx), 2018 WL 5263065, at *5 (C.D. Cal. June 26, 2018)
`
`(“The Court simply rejects as unfounded Defendants’ argument that Plaintiff must more
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`specifically describe the instructional materials.”).
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`Further yet, the Complaint goes on to provide actual examples of exactly how these user
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`guides and websites direct customers to use the accused products in an infringing manner. The
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`Complaint includes multiple citations to, and excerpts from, Apple’s relevant web pages, which
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`demonstrate not only the infringing functionality of the accused devices but also that Apple
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`specifically intended for its customers to use that functionality in an infringing manner:
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` Complaint at ¶¶ 24, 38, 154 (providing excerpts from Apple’s websites regarding the use
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`of the “Find My Friends” and “Maps” applications in support of infringement claims
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`against the ’317, ’999, and ’498 Patents);
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` Complaint at ¶ 53 (providing excerpts of Apple’s websites regarding, e.g., use of dual
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`camera system and image stabilization in support of infringement of ’493 Patent);
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`5
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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 11 of 21 PageID #: 360
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` Complaint at ¶ 66 (providing excerpt of Apple’s website regarding use of AirDrop on
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`Apple products in support of infringement of ’438 Patent);
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` Complaint at ¶ 83 (providing excerpts of Apple’s websites regarding how Apple
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`describes the cellular and wireless operation of its devices when in use in support of
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`infringement of ’193 Patent);
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` Complaint at ¶ 96 (providing excerpts of Apple’s websites regarding use of FaceTime
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`and video streaming in support of infringement of ’991 Patent);
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` Complaint at ¶ 109 (providing excerpts of Apple’s websites regarding use of Do Not
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`Disturb functionality in support of infringement of ’306 Patent);
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` Complaint at ¶ 126 (providing excerpts of Apple’s websites regarding the use of Low
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`Power Mode in support of infringement of ’794 Patent);
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` Complaint at ¶ 139 (providing excerpts of Apple’s websites regarding unlocking Apple
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`Watch with an iPhone and the Activation Lock feature of an Apple Watch in support of
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`infringement of ’586 Patent).
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`These excerpts include specific directions from Apple to its customers on how to operate the
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`accused functionality. See, e.g., Complaint at ¶ 24 (“You [the customer] can use Find My Friends
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`on any iPhone, iPad, iPod touch, or Apple Watch that you own. … On your iPhone or iPod
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`touch, tap Me, then tap a device under Share My Location From. …”).
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`Taken together, Maxell’s allegations form a plausible claim that Apple provided its
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`customers with instructions for infringing and that it intended for its customers to follow those
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`instructions. See, e.g., Biosonix, LLC v. Hydrowave, LLC, No. 4:16-cv-139, 2016 U.S. Dist.
`
`LEXIS 189970, at *10-11 (E.D. Tex. Aug. 10, 2016) (holding that plaintiff plausibly pled facts
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`showing that defendants specifically intended for their customers to infringe the asserted patents
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`6
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`

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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 12 of 21 PageID #: 361
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`based in part on plaintiff’s allegations of infringement based on excerpts of defendants’ manuals
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`and webpages); see also, e.g., Uniloc USA, Inc. v. Avaya Inc., No. 6:15-CV-1168-JRG, 2016
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`U.S. Dist. LEXIS 181826, at *20-21 (E.D. Tex. May 13, 2016).
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`The allegations here are unlike those held deficient in Core Wireless Licensing S.A.R.L.,
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`2015 U.S. Dist. LEXIS 107354 at *12-13. The allegations in that case were insufficient because
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`they failed to identify even which functions of the accused products were at issue, let alone
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`which instructions were relevant to those functions or how they were relevant. Id. at *13. The
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`Court acknowledged that “the provision of instructions by an accused infringer may indicate
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`specific intent to induce infringement,” but it held that the instructions identified in that case
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`were insufficient because they failed to identify, even at a basic level, which functionalities of
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`the accused products were at issue, or how the instructions directed customers to use that
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`functionality in an infringing manner. Id.
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`In contrast to Core Wireless, Maxell included extensive discussion of Apple’s infringing
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`functionalities, identified Apple webpages that are directed to the use by Apple’s customers of
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`such functionalities, and included exemplary excerpts of such webpages. Maxell’s allegations are
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`sufficient to support its induced infringement claims. Those claims should not be dismissed.
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`B. Maxell’s Claims for Pre-Suit Indirect and Willful Infringement of the ’586
`Patent Are Plausible and Should Not Be Dismissed.
`
`Apple’s second argument is that the Complaint fails to plausibly allege that Apple had
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`knowledge of the ’586 Patent. Mot. 8-10. According to Apple, the allegation that Apple received
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`notice of the ’586 Patent on October 19, 2018 is “facially implausible” because that patent did
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`not issue until four months later. Id. at 8. In fact, on October 19, Maxell placed Apple on notice
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`of the patent application (No. 13/874,535) that would mature into the ’586 Patent, but Apple
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`argues that this notice was legally insufficient. Id. at 9 (citing Diamond Grading Techs. v. Am.
`
`
`
`7
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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 13 of 21 PageID #: 362
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`Gem Soc’y, No. 2:14-cv-1161, 2016 U.S. Dist. LEXIS 105697, at *5-6 (E.D. Tex. Mar. 30,
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`2016)). It was not.
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`In addition to placing Apple on notice of the ’535 application on October 19, 2018,
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`Maxell also provided one important detail: it also provided notice that day that the claims of the
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`’535 application had already been allowed by the PTO and that Apple was infringing particular
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`claims of the allowed application. With the application allowed, the only step remaining was
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`acceptance of the patentee’s correction to a small number of typographical errors. There was no
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`genuine concern that a patent would not ultimately issue or that the scope of the to-be-issued
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`claims would change. Thus Apple knew (since at least October 19, 2018) of the asserted claims
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`of the ’586 Patent. Complaint at ¶ 145.
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`The fact that the ’586 Patent issued four months after the alleged date of notice (October
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`19, 2018) does not render it implausible that Apple received notice on that date. That is because,
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`contrary to Apple’s argument, there is no bright line rule that an infringer cannot be on notice of
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`a patent until the patent actually issues. Indeed, such a rule has been squarely rejected by the
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`Federal Circuit.
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`Apple’s proposed bright line rule is based on the Federal Circuit’s 1985 decision in State
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`Indus. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985). There, the court held that
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`notice of a pending patent application could not support a finding of willful infringement because
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`“[f]iling an application is no guarantee any patent will issue and a very substantial percentage of
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`applications never result in patents” and because “[w]hat the scope of claims in patents that do
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`issue will be is something totally unforeseeable.” Id.
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`But the Federal Circuit has since explained that “State does not … hold that a finding of
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`willful infringement can not stand whenever [infringement] begins prior to the issuance of a
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`
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`8
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`

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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 14 of 21 PageID #: 363
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`patent.” Shiley, Inc. v. Bentley Labs., Inc., 794 F.2d 1561, 1568 (Fed. Cir. 1986); see also
`
`Blitzsafe Tex., LLC v. Volkswagen Group of Am., Inc., No. 2:15-cv-1274-JRG-RSP, 2016 U.S.
`
`Dist. LEXIS 124144, at *24 (E.D. Tex. Aug. 19, 2016) (“State Industries does not hold that no
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`matter the context, a party’s exposure to a patent application cannot give rise to knowledge of the
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`claims in a later-issued patent.”). Rather, “State is in harmony with [the Federal Circuit’s] prior
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`and subsequent case law, which looks to the totality of the circumstances presented in the case.”
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`Id. (internal quotation marks omitted). Thus, there is no per se rule that receiving notice of a
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`patent application cannot provide notice of the ultimate patent and its claims.
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`In the absence of such a per se rule, it would be inappropriate to dismiss the pre-suit
`
`indirect and willful infringement claims for the ’586 Patent from this case merely because it
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`issued four months after the date on which Apple is alleged to have received notice. The totality
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`of the circumstances here render it plausible that Apple knew of the asserted claims of the ’586
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`Patent prior to its issuance. Thus, Apple’s request for dismissal of the pre-suit indirect and
`
`willful infringement claims should be denied. See Copan Italia S.P.A. v. Puritan Med. Prods. Co.
`
`LLC, No. 1:18-cv-00218-JDL, 2018 U.S. Dist. LEXIS 191927, at *9 (D. Me. Nov. 9, 2018)
`
`(holding that knowledge of patent applications permits reasonable inference that defendant had
`
`knowledge of plaintiff’s patents and thus that complaint plausibly pled knowledge of asserted
`
`patents); SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 608-609 (D. Mass.
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`2018) (rejecting argument that knowledge of an asserted patent’s application before it has issued
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`cannot be substantial evidence from which a reasonable jury can infer that an accused infringer
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`had knowledge of the asserted patent itself).
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`9
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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 15 of 21 PageID #: 364
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`C. Maxell Has Pled Notice of the Asserted Patents Sufficient to Sustain Its Pre-
`Suit Indirect and Willful Infringement Claims.
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`Apple’s final argument is that “Maxell does not support its remaining [pre-suit] indirect
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`and willful infringement claims with any allegations that Apple had pre-suit knowledge of
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`alleged infringement of any asserted patent.” Mot. 2 (emphasis added). In other words, Apple
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`argues that it is implausible that it knew or should have known before the Complaint was filed
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`that its actions constituted direct or indirect infringement. Id. at 10-12.
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`This argument fails because the Complaint explains that Apple and Maxell engaged in six
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`years of licensing negotiations and technical discussions concerning the asserted patents, which
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`on its own renders it quite plausible that Apple knew or should have known that it was infringing
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`the asserted claims. Complaint at ¶ 5. Moreover, the Complaint sets out that, over those years of
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`negotiation, “Apple’s representatives requested and received detailed explanations regarding
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`Maxell’s patents and allegations.” Id. Apple knows this full well because it participated in these
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`negotiations directly.
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`To remind Apple of the relevant meetings and communications through which Apple
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`received “information regarding Maxell’s patents, the developed technology, and Apple’s
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`ongoing use of this patented technology” (id. at ¶ 5), the Complaint identifies the specific dates
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`of the relevant meetings and communications, separately for each asserted patent. See id. at ¶¶
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`30-31, 44-45, 59-60, 72-73, 89-90, 102-103, 115-116, 132-133, 145-146, 160-161. Again, these
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`meetings and communications were directly with Apple, and Apple cannot feign ignorance of
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`those party-to-party communications.
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`In short, Apple is well aware that Maxell informed Apple—through those meetings and
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`communications—of the asserted patents, of Apple’s infringement of those patents, and (in many
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`instances) of exactly how certain Apple products infringed those patents through detailed
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`10
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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 16 of 21 PageID #: 365
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`explanations (including claim charts). For example, on June 25, 2013, Maxell provided Apple
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`with a presentation and patent list that introduced certain exemplary patents to which Maxell
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`indicated Apple required a license, including the asserted ’317, ’999, ’498, and ’493 Patents.
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`To the extent Apple believes the Complaint must specifically identify the exact moment
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`and mechanism through which Apple first obtained actual knowledge of infringement, it is
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`wrong. Notice pleading “do[es] not require heightened fact pleading of specifics, but only
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`enough facts to state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 570.
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`Thus, “[a]ctual knowledge of infringement or the infringement risk is not necessary to plead a
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`claim for willful infringement.” Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, No.
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`2:15-CV-37, 2016 U.S. Dist. LEXIS 95584, at *3-4 (E.D. Tex. Mar. 30, 2016). Rather, the
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`Federal Circuit has described claims of willful infringement as “more than sufficient” where they
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`included allegations of pre-suit knowledge of the patent along with assertions that the accused
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`infringement was “willful and deliberate.” Mitutoyo Corp., 499 F.3d at 1290. So too have the
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`courts of this district. See, e.g., MobileMedia Ideas LLC v. HTC Corp., No. 2:10-cv-112-TJW,
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`2011 U.S. Dist. LEXIS 104892, at *5-6 (E.D. Tex. Sept. 15, 2011) (holding willful infringement
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`to be sufficiently plead where the complaint alleges dates defendant received notice of patents
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`and that defendant continue distributing devices after such notice); WordCheck Tech, 2012 U.S.
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`Dist. LEXIS 189071, at *5-6 (holding factual allegations sufficient for willful infringement
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`where complaint “allege[d] when Movants received notice of the patent-in-suit and that their
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`continued alleged infringement is objectively reckless.”).
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`For these reasons, Maxell’s allegations that Apple learned of the asserted patents and its
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`use on certain dates during a six-year negotiation is certainly sufficient to state a plausible claim
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`that Apple knew or should have known it was infringing. See Complaint at ¶¶ 30-31, 44-45, 59-
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`11
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`Case 5:19-cv-00036-RWS Document 31 Filed 06/06/19 Page 17 of 21 PageID #: 366
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`60, 72-73, 89-90, 102-103, 115-116, 132-133, 145-146, 160-161 (alleging that Apple continued
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`to infringe “despite an objectively high likelihood that [its] activities infringed”). And if Maxell’s
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`claims in this regard are sufficient to plead Apple’s willfulness, which they are, then they are
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`sufficient for indirect infringement. See, e.g., Salazar, No. 2:16-cv-1096, 2018 U.S. Dist. LEXIS
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`41934, at *5.
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`Ultimately, Apple’s challenge is to the merits of the knowledge issue: it thinks the notice
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`it received in the negotiations was insufficient to support a finding of pre-suit willfulness or
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`indirect infringement. But this is not the time or place to make those arguments. While a patentee
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`must ultimately prove that the infringer acted despite a high likelihood of infringement, “this is
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`an evidentiary burden, not a pleading standard.” Pecorino v. Vutec Corp., 934 F. Supp. 2d at 450.
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`Maxell’s pre-suit willful and indirect infringement claims rise above those found
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`deficient in T-Rex Prop. AB v. Regal Entm’t Grp., No. 6:16-cv-927, 2017 U.S. Dist. LEXIS
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`156859, at *25-26 (E.D. Tex. Aug. 31, 2017) (report and recommendation adopted, 2017 U.S.
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`Dist. LEXIS 155605 (E.D. Tex. Sept. 22, 2017)), the only Eastern District of Texas case Apple
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`cites. In T-Rex, the plaintiff relied on an inference of “constructive knowledge,” but there were
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`no alleged facts from which the Court could reasonably infer the defendant knew of the asserted
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`patents at all. Id. at *25.
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`This case is easily distinguishable because Maxell provided specific facts about the
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`negotiations and the dates on which Maxell supplied Apple with actual knowledge of the patents
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`and notice of infringement. Courts have held that similar factual allegations—that the defendant
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`had knowledge of the asserted patents through pre-suit negotiations with the patentee—were
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`sufficient to state a claim. See