Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`BILLJCO, LLC,
` Plaintiff,
`
`v.
`
`APPLE INC.,
` Defendant.
`
`
`6:21-cv-00528-ADA
`
`
`ORDER GRANTING-IN-PART AND DENYING-IN-PART DEFENDANT’S
`MOTION TO DISMISS PLAINTIFF’S CLAIMS OF WILLFUL
`INFRINGEMENT AS TO EACH PATENTS-IN-SUIT AND PLAINTIFF’S CLAIMS
`OF INDIRECT INFRINGEMENT AS TO EACH PATENTS-IN-SUIT [ECF No. 16]
`
`Came on for consideration this date is Defendant Apple’s Motion to Dismiss Plaintiff’s
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`Claims of Willful Infringement as to Each Patent-in-Suit and Plaintiff’s Claims of Indirect
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`Infringement as to Each Patent-in-Suit, filed August 2, 2021. ECF No. 16 (the “Motion”). Plaintiff
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`BillJCo responded on August 16, 2021, ECF No. 23, to which Apple replied on August 23, 2021,
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`ECF No. 24. After careful consideration of the Motion, the Parties’ briefs, and the applicable law,
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`the Court GRANTS-IN-PART and DENIES-IN-PART Apple’s Motion to Dismiss.
`
`I. BACKGROUND
`
`On May 25, 2021, BillJCo filed suit against Apple, accusing it of infringing six patents (the
`
`“Asserted Patents”) directed to Bluetooth Low Energy (“BLE”) beacon technology. See ECF No.
`
`1 (the “Complaint”). The Complaint identifies Apple devices allegedly infringing the Asserted
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`Patents by operating in compliance with BLE implementing iOS7 and higher. ECF No. 1 ¶ 36.
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`BillJCo is alleging that Apple at least directly infringes, induces infringement, contributorily
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`infringes, and willfully infringes. See id. Apple moves to dismiss the last three counts under
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`Federal Rule of Civil Procedure 12(b)(6). ECF No. 16. That Motion is now ripe for judgment.
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`1
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 2 of 17
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`II. LEGAL STANDARD
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`A.
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`Pleading Standards
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`A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a
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`claim upon which relief can be granted is “a purely procedural question not pertaining to patent
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`law,” and so the law of the Fifth Circuit controls. McZeal v. Sprint Nextel Corp., 501 F.3d 1354,
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`1356 (Fed. Cir. 2007). When considering such motions, this Court “accepts all well-pleaded facts
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`as true, views them in the light most favorable to the plaintiff, and draws all reasonable inferences
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`in the plaintiff's favor.” Johnson v. BOKF Nat’l Ass’n, 15 F.4th 356, 361 (5th Cir. 2021).
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`Rule 12(b)(6) requires that a complaint contain sufficient factual matter to “state a claim
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`to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl.
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`Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To meet this factual plausibility standard, the
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`plaintiff must plead “factual content that allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged,” based on “more than a sheer possibility that a
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`defendant has acted unlawfully.” Id. “Threadbare recitals of the elements of a cause of action,
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`supported by mere conclusory statements, do not suffice.” Id. In resolving a motion to dismiss for
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`failure to state a claim, the question is “not whether [the plaintiff] will ultimately prevail, . . . but
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`whether [the] complaint was sufficient to cross the federal court’s threshold.” Skinner v. Switzer,
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`562 U.S. 521, 530 (2011). “The court’s task is to determine whether the plaintiff has stated a legally
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`cognizable claim that is plausible, not to evaluate the plaintiff's likelihood of success.” Lone Star
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`Fund V (U.S.), L.P. v. Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir. 2010) (citing Iqbal, 556
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`U.S. at 678).
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`B. Willful Infringement
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`Section 284 of the Patent Act provides that a court may increase damages for patent
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`infringement “up to three times the amount found or assessed.” 35 U.S.C. § 284. A party seeking
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`2
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 3 of 17
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`such “enhanced damages” must show that an infringer’s conduct has been “willful,” or “wanton,
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`malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a
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`pirate.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103–04 (2016). Enhanced damages
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`should “generally be reserved for egregious cases typified by willful misconduct.” Id. at 106.
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`To state a claim for relief for willful patent infringement, a plaintiff must allege facts
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`plausibly showing that the accused infringer: “(1) knew of the patent-in-suit; (2) after acquiring
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`that knowledge, it infringed the patent; and (3) in doing so, it knew, or should have known, that its
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`conduct amounted to infringement of the patent.” Parity Networks, LLC v. Cisco Sys., Inc., No.
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`6:19-CV-00207-ADA, 2019 WL 3940952, at *3 (W.D. Tex. July 26, 2019) (quoting Välinge
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`Innovation AB v. Halstead New England Corp., No. 16-1082-LPS-CJB, 2018 WL 2411218, at *13
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`(D. Del. May 29, 2018)).
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`C.
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`Induced Infringement
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`Section 271(b) of the Patent Act provides that “[w]hoever actively induces infringement of
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`a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). To succeed on such a claim, the
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`patentee must show that the accused infringer (1) knowingly induced direct infringement and (2)
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`possessed “specific intent” to induce that infringement. See MEMC Electr. Materials, Inc. v.
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`Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005). Willful blindness can
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`satisfy the knowledge requirement, Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344,
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`1347 (Fed. Cir. 2016), and circumstantial evidence may suffice to prove specific intent, MEMC,
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`420 F.3d at 1378.
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`To state a claim for relief for induced patent infringement, “a complaint must plead facts
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`plausibly showing that the accused infringer ‘specifically intended [another party] to infringe [the
`
`patent] and knew that the [other party]’s acts constituted infringement.’” Lifetime Indus., Inc. v.
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`Trim-Lok, Inc., 869 F.3d 1372, 1376–77 (Fed. Cir. 2017) (quoting In re Bill of Lading
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`3
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 4 of 17
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`Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1336 (Fed. Cir. 2012)). “[T]here can
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`be no inducement or contributory infringement without an underlying act of direct infringement.”
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`Joao Control & Monitoring Sys., LLC v. Protect Am., Inc., No. 1:14-cv-00134-LY, 2015 U.S. Dist.
`
`LEXIS 74262, 2015 WL 3513151, at *3 (W.D. Tex. Mar. 24, 2015). “To state a claim for indirect
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`infringement . . . a plaintiff need not identify a specific direct infringer if it pleads facts sufficient
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`to allow an inference that at least one direct infringer exists.” In re Bill of Lading, 681 F.3d at
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`1336.
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`D.
`
`Contributory Infringement
`
`Section 271(c) of the Patent Act provides that:
`
`Whoever offers to sell or sells within the United States or imports
`into the United States a component of a patented machine,
`manufacture, combination or composition, or a material or apparatus
`for use in practicing a patented process, constituting a material part
`of the invention, knowing the same to be especially made or
`especially adapted for use in an infringement of such patent, and not
`a staple article or commodity of commerce suitable for substantial
`noninfringing use, shall be liable as a contributory infringer.
`
`35 U.S.C. § 271(c). Contributory infringement of a patented device involves the sale, offer to sell,
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`or importing of a component of the device, which is “not itself technically covered by the claims
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`of a product or process patent.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469
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`(Fed. Cir. 1990). Unlike induced infringement, contributory infringement requires “only proof of
`
`a defendant’s knowledge, not intent, that his activity cause[s] infringement.” Hewlett-Packard Co.
`
`v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). But “[l]ike induced infringement,
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`contributory infringement requires knowledge of the patent in suit and knowledge of patent
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`infringement.” Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 639 (2015).
`
`To state a claim for contributory infringement, “a plaintiff must plausibly allege that the
`
`accused infringer knew of the asserted patents . . . and must ‘plead facts that allow an inference
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 5 of 17
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`that the components sold or offered for sale have no substantial non-infringing uses.’” Artrip v.
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`Ball Corp., 735 F. App’x 708, 713 (Fed. Cir. 2018) (first citing Commil, 575 U.S. at 639; and then
`
`quoting In re Bill of Lading, 681 F.3d at 1337).
`
`III. ANALYSIS
`
`A.
`
`BillJCo Has Not Sufficiently Pleaded Pre-Suit Willful Infringement
`
`To state a claim for willful infringement, a plaintiff must allege facts plausibly showing
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`that the accused infringer: “(1) knew of the patent-in-suit; (2) after acquiring that knowledge, it
`
`infringed the patent; and (3) in doing so, it knew, or should have known, that its conduct amounted
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`to infringement of the patent.” Parity, 2019 WL 3940952, at *3. Apple challenges BillJCo’s
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`compliance with the first and third elements in the pre-suit context, succeeding to varying degrees.
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`1. Knowledge of the Patents
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`The Complaint recites two allegations to establish Apple’s pre-suit knowledge; Apple
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`challenges the sufficiency of both. ECF No. 16 at 2. First, the Complaint alleges that Apple should
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`have already learned of the Asserted Patents because the USPTO cited them during prosecution of
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`an Apple patent application, U.S. Patent Application No. 13/373,966. See ECF No. 16 at 2. Apple
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`asserts that “citation of [a] patent in a patent application is an insufficient notice of infringement
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`and would not allow Apple to have knowledge of a specific infringement claim.” Id. at 2–3 (citing
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`U.S. Philips Corp. v. Iwasaki Elec. Co., 505 F.3d 1371, 1375 (Fed. Cir. 2007)). Second, the
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`Complaint alleges that Apple has been aware of its infringement of the Asserted Patents since it
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`received a letter from BillJCo on June 5, 2019 (the “June 2019 Letter”). See ECF No. 16 at 3.
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`Apple argues that this is inaccurate on its face because one of the Asserted Patents, U.S. Patent
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`No. 10,477,994 (the “’994 patent”), did not issue until November 19, 2019. ECF No. 16 at 3–4.
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`BillJCo adequately alleges Apple’s pre-suit knowledge of all the patents but the ’994
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`patent. The Complaint alleges that Apple learned of the Asserted Patents by June 5, 2019, upon
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`5
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 6 of 17
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`Apple “receiving a letter from BillJCo regarding the Patents-in-Suit. Since obtaining knowledge
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`of its infringing activities, Apple has failed to cease its infringing activities.” ECF No. 1 ¶ 38.
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`Apple’s Motion does not deny the existence of the June 2019 Letter but notes how the Letter could
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`not have referenced the ’994 patent, which the USPTO had not yet issued. BillJCo met this
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`argument with silence. While this Court construes a complaint in the light most favorable to
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`plaintiff, accepting all well-pleaded facts as true, it does not “accept as true conclusory allegations,
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`unwarranted factual inferences, or legal conclusions.” Plotkin v. IP Axess Inc., 407 F.3d 690, 696
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`(5th Cir. 2005). The Complaint establishes that the ’994 patent issued in November 2019, see ECF
`
`No. 1-10 (the ’994 patent), so BillJCo’s allegation that the June 2019 Letter referenced that patent
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`is conclusory and accorded no weight. The Court nevertheless finds the same allegation as to the
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`other Asserted Patents sufficient to plead Apple’s pre-suit knowledge of those patents.
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`This finding is bolstered in part by BillJCo’s allegations that “many of the Patents-in-Suit,
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`as well as other[] patents in the Patent Portfolio” were cited during prosecution of Apple’s own
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`patents. ECF No. 1 ¶ 39. Specifically, the Complaint states that the USPTO cited the ’267 patent
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`during prosecution of one of Apple’s patent applications, well before BillJCo sent the June 2019
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`Letter. Id. This supports the inference that Apple knew of the ’267 patent before the Complaint.
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`The Court will not, however, establish a rule that notice of one patent in a portfolio or large family
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`constitutes constructive notice of every patent in that portfolio or family. See Kirsch Rsch. & Dev.,
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`LLC v. Tarco Specialty Prod., Inc., No. 6:20-CV-00318-ADA, 2021 WL 4555802, at *2 (W.D.
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`Tex. Oct. 4, 2021) (citing SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 608
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`(D. Mass. 2018) (collecting cases)). BillJCo’s allegations are too conclusory to adequately plead
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`Apple’s pre-suit notice of at least the ’994 patent.
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 7 of 17
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`For the foregoing reasons, BillJCo has adequately alleged that Apple learned of the
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`Asserted Patents (excepting the ’994 patent) before BillJCo filed its Complaint. Apple does not
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`challenge the Complaint’s allegations that it continued its accused conduct even after learning of
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`the Asserted Patents (excepting the ’994 patent). ECF No. 1 ¶ 44. The Court is therefore satisfied
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`that BillJCo sufficiently alleges the first two Parity factors for all Asserted Patents but the ’994
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`patent.
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`2. Knowledge of Infringement
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`Allegations regarding the June 2019 Letter do not satisfy the third Parity element in the
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`pre-suit context. Apple asserts that the Complaint recites no factual allegations showing that Apple
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`“knew, or should have known, that its conduct amount to infringement of the patent.” ECF No. 16
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`at 2–3. In response, BillJCo cites its Complaint as stating that “BillJCo sent Apple a letter on June
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`5, 2019 regarding the Patents-in-Suit.” ECF No. 23 at 3 (citing ECF No. 1 ¶ 38). BillJCo argues
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`that, in other cases, “this Court found that the question of whether a notice letter was sufficient to
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`put a defendant on notice of infringement is a ‘proof’ issue that cannot be resolved at the pleading
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`stage.” ECF No. 23 at 5 (first citing Parity, 2019 WL 3940952, at *3; and then citing FHE USA
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`LLC v. Lee Specialties Inc., No. 5:18-CV-715-OLG, 2018 WL 11347193, at *3 (W.D. Tex. Nov.
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`27, 2018)).
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`Yet the opinions upon which BillJCo relies were drafted in view of the relevant notice
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`letters; that is not true here. As Apple notes, this Court’s review of the letters-at-issue influenced
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`the Parity decision. Parity, 2019 WL 3940952, at *3 (“The Court has reviewed this
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`correspondence.”). Likewise, in FHE, the Court had the relevant notice letter before it. See Exhibit
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`E to Motion to Dismiss, FHE USA LLC v. Lee Specialties Inc., No. 5:18-CV-715-OLG, ECF No.
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`13-1 (W.D. Tex. July 25, 2018). The FHE court then concluded that the letter notified the
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`defendant of the asserted patent and “the potential for infringement by” a specific accused product.
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 8 of 17
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`FHE, 2018 WL 11347193, at *3. Here, the Court cannot draw the same conclusion because it is
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`not privy to the June 2019 letter or its contents—and it unclear why. BillJCo explains that Apple
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`has sued other patent plaintiffs disclosing such a letter. ECF No. 23 at 5 n.1 (citing Apple, Inc. v.
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`Koss Corporation, No. 20-cv-5504 (N.D. Cal. 2020)). Apple notes in reply that BillJCo “did not
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`even attempt to seek Apple’s position on whether the letter is confidential.” ECF No. 24 at 2 n.1.
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`If BillJCo feared the consequences of revealing confidential information, this Court has standing
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`orders that provide that such information may be filed under seal.
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`Nonetheless, BillJCo reveals almost nothing about the nature and contents of the June 2019
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`Letter. The Välinge opinion—from which this Court cribbed Parity’s three-elements framework—
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`recognized that the plausibility of allegations regarding an accused infringer’s knowledge of
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`infringement “will necessarily require an assessment of the totality of the patentee’s allegations . . .
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`as a sufficiently plausible showing could come in many different forms.” Välinge, 2018 WL
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`2411218, at *13. But the totality of BillJCo’s pleadings on the issue are reed-thin, amounting only
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`to allegations that the USPTO and BillJCo notified Apple of at least some of the Asserted Patents.
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`Mere knowledge of the Asserted Patents is not enough. See Monolithic Power Sys., Inc. v. Meraki
`
`Integrated Cir. (Shenzhen) Tech., Ltd., No. 6:20-CV-008876-ADA, 2021 WL 3931910, at *5
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`(W.D. Tex. Sept. 1, 2021) (holding that knowledge of a patent and knowledge of infringement are
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`“distinct elements”). The Complaint does not allege that BillJCo’s June 2019 Letter notified Apple
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`that it infringed the Asserted Patents or identified Apple products accused of infringement here.
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`Cf. Bench Walk Lighting LLC v. LG Innotek Co., 530 F. Supp. 3d 468, 492 (D. Del. 2021) (finding
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`insufficient a letter that did not identify most of the accused products or how the defendant
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`allegedly infringed), R&R adopted, 530 F. Supp. 3d 468, 477 (D. Del. 2021); Teradyne, Inc. v.
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`Astronics Test Systems, Inc., 2020 WL 8173024, *3–*5 (C.D. Cal. 2020) (finding insufficient a
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`8
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 9 of 17
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`letter that did not identify any specific product that plaintiff contended infringed the asserted
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`patent). Without more information about the June 2019 Letter, the Court cannot find that BillJCo
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`sufficiently pleaded pre-suit willful infringement.
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`B.
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`BillJCo Has Not Sufficiently Pleaded Pre-Suit Indirect Infringement
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`Like a willful infringement claim, indirect infringement claims require a showing that the
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`accused infringer knew of its infringement. See Commil, 575 U.S. at 639 (“Like induced
`
`infringement, contributory infringement requires knowledge of the patent in suit and knowledge
`
`of patent infringement.”). BillJCo’s pre-suit indirect infringement claims therefore fail for the
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`same reasons its pre-suit willful infringement claims fail.1
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`C.
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`BillJCo Has Sufficiently Pleaded Post-Suit Willful Infringement
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`Apple also argues that BillJCo insufficiently pleads post-suit willful infringement. ECF
`
`See No. 16 at 5. This Court disagrees.2 See USC IP P’ship, L.P. v. Facebook, Inc., No. 6:20-CV-
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`
`1 BillJCo’s pre-suit contributory infringement claims fail for yet other reasons outlined in the post-
`suit context. See Section III.E, infra.
`2 This Court is not alone in holding that post-filing conduct can support a willfulness claim. See,
`e.g., BillJCo, LLC v. Cisco Sys. Inc., No. 2:21-CV-00181-JRG, 2021 WL 6618529 (E.D. Tex. Nov.
`30, 2021); Longhorn Vaccines & Diagnostics, LLC v. Spectrum Sols. LLC, No.
`220CV00827DBBJCB, 2021 WL 4324508, at *14 (D. Utah Sept. 23, 2021); Ravgen, Inc. v. Ariosa
`Diagnostics, Inc., No. CV 20-1646-RGA-JLH, 2021 WL 3526178, at *4 (D. Del. Aug. 11, 2021);
`Team Worldwide Corp. v. Acad., Ltd., No. 219CV00092JRGRSP, 2021 WL 1897620, at *6 (E.D.
`Tex. May 3, 2021), order clarified, 2021 WL 1854302 (E.D. Tex. May 10, 2021), R&R adopted,
`2021 WL 1985688 (E.D. Tex. May 18, 2021); KIPB LLC v. Samsung Elecs. Co., No.
`219CV00056JRGRSP, 2020 WL 1500062, at *5 (E.D. Tex. Mar. 9, 2020), R&R adopted, No.
`2:19-CV-56-JRG-RSP, 2020 WL 1495725 (E.D. Tex. Mar. 27, 2020); AMG Prods., Inc. v. Dirt
`Cheap, LLC, No. 6:18-CV-00267-JDK, 2019 U.S. Dist. LEXIS 63370, at *12 (E.D. Tex. Mar. 12,
`2019); Preferential Networks IP, LLC v. AT&T Mobility, LLC, No. 2:16-cv-01374-JRG-RSP, 2017
`U.S. Dist. LEXIS 140979, at *10 (E.D. Tex. July 15, 2017), R&R adopted, No. 2:16-cv-01374-
`JRG-RSP, 2017 U.S. Dist. LEXIS 140516 (E.D. Tex. Aug. 31, 2017); T-Rex Prop. AB v. Regal
`Ent. Group, No. 16-927, 2017 WL 4229372 (E.D. Tex. Aug 31. 2017); Blitzsafe Tex., LLC v.
`Volkswagen Grp. of Am., Inc., 2016 U.S. Dist. LEXIS 124144, at *25 (E.D. Tex. Aug. 19, 2016);
`Clouding IP, LLC v. Amazon.com, Inc., No. CA 12-641-LPS, 2013 WL 2293452, at *4 (D. Del.
`May 24, 2013).
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 10 of 17
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`00555-ADA, 2021 WL 3134260, at *2 (W.D. Tex. July 23, 2021). Serving a complaint will, in
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`most circumstances, notify the defendant of the asserted patent and the accused conduct. So long
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`as the complaint also adequately alleges that the defendant is continuing its purportedly infringing
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`conduct, it will satisfy all three Parity elements and sufficiently plead a post-filing/post-suit willful
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`infringement claim.3 BillJCo’s Complaint complies with that standard. See ECF No. 1 ¶ 44
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`(alleging that “since at least the filing of this action, Apple has been aware of the unjustifiably high
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`risk that its actions constituted and continue to constitute infringement of the Patents-in- Suit, and
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`that the Patents-in-Suit are valid”).
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`The Court finds this approach consonant with Mentor Graphics Corp. v. EVE-USA, Inc.,
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`851 F.3d 1275, 1295 (Fed. Cir. 2017), in which the Federal Circuit reversed a district court order
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`precluding a plaintiff from asserting willful infringement based “exclusively on post-suit
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`willfulness conduct.” Id. The lower court’s order relied on the Federal Circuit’s pre-Halo practice
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`of precluding post-suit willfulness if the plaintiff did not first seek a preliminary injunction. See
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`id. (citing In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007)). This is the “Seagate
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`rule.” The Mentor Graphics Court deemed that rule outdated, citing Halo’s ruling that “rigid
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`formula[s] for awarding enhanced damages” are disfavored. Id. at 1296 (quoting Halo, 579 U.S.
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`at 106). In this Court’s judgment, Mentor Graphics overruled the Seagate rule and thereby
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`implicitly endorsed the theory that a plaintiff may found its willful infringement claim “exclusively
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`on post-suit . . . conduct.” See, e.g., Vaporstream, Inc. v. Snap Inc., No. 2:17-cv-00220-MLH
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`(KSx), 2020 U.S. Dist. LEXIS 5642, at *55 (C.D. Cal. Jan. 13, 2020); Ioengine, LLC v. Paypal
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`3 This ruling departs from Välinge—the opinion from which this Court borrowed Parity’s three-
`element framework. While the Välinge opinion held that only pre-filing conduct can support a
`willfulness claim, see Välinge, 2018 WL 2411218, at *12, this Court finds Välinge’s three-element
`structure no less effective applied to allegations of post-filing conduct.
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`Holdings, Inc., Civil Action No. 18-452-WCB, 2019 U.S. Dist. LEXIS 12195, at *22 n.4 (D. Del.
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`Jan. 25, 2019) (Bryson, J., sitting by designation).4
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`Apple inveighs against this approach, arguing that post-suit willful conduct alone cannot
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`be “egregious.” The Motion asserts that a plaintiff cannot sufficiently plead willful infringement
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`without also adequately alleging that the accused infringer’s conduct has been “egregious.” ECF
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`No. 16 at 4 (quoting Halo, 579 U.S. at 103–04). And Apple seemingly reasons that “when an
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`accused infringer learns of the patent post-suit, and then merely continues to manufacture allegedly
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`infringing products,” that is not sufficiently egregious. Id. at 5 (first quoting M&C Innovations,
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`LLC v. Igloo Prods. Corp., No. 4:17-cv-2372, 2018 WL 4620713, at *5 (S.D. Tex. July 31, 2018);
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`and then citing Meetrix IP, LLC v. Cisco Sys., Inc., No. 1:18-cv-309-LY, 2018 WL 8261315, at *3
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`(W.D. Tex. Nov. 30, 2018)).
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`This Court will follow Välinge in refusing to impose an egregiousness pleading
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`requirement. See Välinge, 2018 WL 2411218, at *6–*7; see also Core Optical Techs., LLC v.
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`Juniper Networks Inc., No. 21-CV-02428-VC, 2021 WL 4618011, at *3 (N.D. Cal. Oct. 7, 2021)
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`(interpreting Eko Brands to suggest that plaintiffs need not plead egregiousness) (citing Eko
`
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`4 Some courts are content with allegations that an original complaint provides notice, but only if
`those allegations are recited in an amended complaint. See, e.g., Merrill Mfg. Co. v. Simmons Mfg.
`Co., No. 1:20-CV-3941-MLB, 2021 WL 3493565, at *6 (N.D. Ga. Aug. 9, 2021) (“Obviously an
`allegation of willful infringement in an initial complaint cannot depend solely on post-suit conduct
`because the accused infringer does not have the requisite ‘culpability’ or offending ‘knowledge’
`at the time of the filing. . . . But Plaintiff has filed an Amended Complaint to allege post-filing,
`willful infringement.”); Wrinkl, Inc. v. Facebook, Inc., No. 20-CV-1345-RGA, 2021 WL 4477022,
`at *7 (D. Del. Sept. 30, 2021) (adopting the same approach); see also NetFuel, Inc. v. Cisco Sys.
`Inc., No. 5:18-CV-02352-EJD, 2018 WL 4510737, at *3 (N.D. Cal. Sept. 18, 2018) (finding it
`procedurally improper for post-suit willfulness to be based on notice in original complaint); Adidas
`Am., Inc. v. Skechers USA, Inc., No. 3:16-cv-1400-SI, 2017 WL 2543811, at *4 (D. Or. June 12,
`2017) (same). This approach exalts form over substances and this Court rejects it. See Ioengine,
`LLC v. Paypal Holdings, Inc., Civil Action No. 18-452-WCB, 2019 U.S. Dist. LEXIS 12195, at
`*12 n.1 (D. Del. Jan. 25, 2019) (Bryson, J., sitting by designation).
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 12 of 17
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`Brands LLC v. Adrian Rivera Maynez Enterprises, Inc., 946 F.3d 1367 (Fed. Cir. 2020)); Longhorn
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`Vaccines & Diagnostics, LLC v. Spectrum Sols. LLC, No. 220CV00827DBBJCB, 2021 WL
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`4324508, at *14 (D. Utah Sept. 23, 2021) (same). Accordingly, BillJCo sufficiently pleads post-
`
`suit willful infringement.
`
`D.
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`BillJCo Has Sufficiently Pleaded Post-Suit Induced Infringement
`
`To state a claim for induced infringement, a complaint must plead facts plausibly showing
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`that the accused infringer specifically intended that another party infringe and knew that the other
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`party’s acts constituted infringement. See Lifetime Indus., 869 F.3d at 1376–77. Apple argues that
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`“[p]re-suit knowledge of the asserted patents is a requirement of an indirect infringement claim.”
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`ECF No. 24 at 4. This Court rejects this proposition in the induced infringement context as it did
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`elsewhere. See Section III.C, supra; see also Billjco, 2021 U.S. Dist. LEXIS 251455, at *18
`
`(collecting cases in support of post-suit induced infringement based on knowledge from the
`
`complaint).
`
`Apple also argues that the Complaint does not plead facts plausibly showing Apple’s
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`specific intent to encourage another party’s direct infringement. ECF No. 16 at 6–9. The Complaint
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`alleges that:
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`Apple takes specific steps to actively induce others—such as, for
`example customers, application developers, and
`third-party
`manufacturers—to access, use, and develop programs and
`applications for the Accused Instrumentalities and intentionally
`instructs infringing use through training videos, demonstrations,
`brochures, installation and user guides . . . .
`
`ECF No. 1 ¶ 42. It then offers exemplary guides from “Apple Developer,” the website Apple
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`maintains to help developers develop software for use on Apple’s operating platforms (like iOS).
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`Id. According to Apple, “these unsupported, limited assertions are the very type of general
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`boilerplate statements courts have found insufficient to plead the specific intent required for
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 13 of 17
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`inducing infringement.” ECF No. 16 at 6. Apple criticizes the Complaint for failing to “identify
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`how those manuals and instructions allegedly encourage infringement.” Id. at 8.
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`In opposition, BillJCo frames its Complaint as alleging that Apple continues to knowingly
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`and actively induce infringement of the Asserted Patents by “aiding, instructing, promoting,
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`encouraging or otherwise acting with the intent to cause other parties, including customers,
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`developers, and third-party manufacturers to use its Accused Infringing Instrumentalities.” ECF
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`No. 23 at 9 (citing ECF No. 1 ¶¶ 41–42, 49, 58, 67, 76, 85, 94). BillJCo also claims that
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`infringement charts appended to the Complaint are “replete with citations to Apple’s own
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`presentation to app developer at Apple’s 2013 Worldwide Developers Conference (WWDC) on
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`how to develop apps to utilize beacon messages in accordance with its iBeacon standard.” Id.
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`(citing ECF Nos. 1-12 to 1-17).
`
`The Court has reviewed the claim charts attached to BillJCo’s Complaint; these are not
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`“conclusory, generalized allegation[s].” ECF No. 16. BillJCo’s charts map limitations to, in most
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`instances, instructions from Apple-authored documentation pulled from Apple Developer. The
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`charts also specifically reference disclosures Apple personnel made at Apple’s 2013 developers’
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`conference. This documentation is doing more than merely “offering customers technical support
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`or product updates.” ECF No. 16 at 7 (quoting Metro-Goldwyn-Mayer Studios Inc. v. Grokster,
`
`Ltd., 545 U.S. 913, 937 (2005)). BillJCo’s claim charts are more than enough to support the
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`allegations Apple derides as “conclusory.” The Complaint has thus adequately alleged Apple’s
`
`specific intent to encourage third-party developers to infringe the asserted patents. See Ioengine,
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`2019 U.S. Dist. LEXIS 12195, at *15 (finding specific intent satisfied where the plaintiff alleged
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`that the defendant “provides software development kits that instruct and encourage the use of the
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 14 of 17
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`infringing products, instructional support on its website, information and technical support on
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`third-party platforms, and video instruction”).
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`Apple challenges this conclusion, criticizing the Complaint for not identifying how the
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`cited instructions “allegedly encourage infringement.” ECF No. 16 at 8.5 It argues that “[t]he
`
`question is not just whether instructions describe[e] the infringing mode, but whether the
`
`instructions teach an infringing use of the device such that we are willing to infer from those
`
`instructions an affirmative intent to infringe the patent.” ECF No. 16 at 8 (citing Takeda Pharms.
`
`U.S.A., Inc. v. West-Ward Pharm. Corp., 785 F.3d 625, 630–31 (Fed. Cir. 2015)). The Court is not
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`convinced that the cited Apple documentation does not outright encourage developers to develop
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`infringing software. Putting that aside, Apple does not articulate why it is unreasonable to infer
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`Apple’s affirmative intent to infringe from the instructions cited in BillJCo’s claim charts. The
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`Complaint alleges that Apple has had knowledge of the Asserted Patents since BillJCo filed the
`
`Complaint and it also maps claim limitations to instructions in Apple’s developer guides. From
`
`these allegations, it is reasonable to infer Apple’s affirmative intent to encourage infringement
`
`post-suit. See Modern Font Application LLC v. Red Lobster Hospitality LLC, No. 6:21-cv-00470-
`
`ADA, slip op. at 5 (W.D. Tex. Jan. 28, 2022) (“[A]dvertising with instructions on how to use the
`
`infringing features is sufficient to permit an inference of specific intent.”); Ocado Innovation, Ltd.
`
`v. AutoStore AS, Civil No. 21-cv-41-JL, 2021 U.S. Dist. LEXIS 152655, at *45 (D.N.H. Aug. 13,
`
`2021) (“Ocado also alleges . . . that AutoStore has promoted the allegedly infringing products in
`
`
`5 Apple also avers that, because BillJCo does not point to specific third parties that Apple induces
`to infringe, the induced infringement claims are doomed. ECF No. 24 at 4. Yet “a plaintiff need
`not identify a specific direct infringer if it pleads facts sufficient to allow an inference that at least
`one direct infringer exists.” In re Bill of Lading, 681 F.3d at 1336. BillJCo’s allegations regarding
`“developers, and third-party manufacturers” are sufficient in view of the existence of, and
`BillJCo’s repeated citation to, Apple Developer. See ECF No. 23 at 9.
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`Case 6:21-cv-00528-ADA Document 44 Filed 02/01/22 Page 15 of 17
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`the context of online grocery sales, which could be construed as an instruction to use the accused
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`products in an infringing manner. This is minimally sufficient to satisfy the second part of the
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`inducement test.”); Fortinet, Inc. v. Forescout Techs., Inc., No. 20-cv-03343-EMC, 2021 U.S.
`
`Dist. LEXIS 111314, at *52 (N.D. Cal. June 14, 2021); Ioengine, 2019 U.S. Dist. LEXIS 12195,
`
`at *15.
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`That is particularly true here where Apple leaves BillJCo’s claim charts unscathed. The
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`Takeda opinion upon which Apple relies turned on a mismatch between the claim language and
`
`indications on a pharmaceutical label. See Takeda, 785 F.3d at 631–34 (affirming no probability
`
`of success for induced infringement where the claims were directed to a method of using a drug to
`
`treat gout and the accused product’s label inst