Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 1 of 18
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§§
`
`
`
`TOUCSHSTREAM TECHNOLOGIES,
`INC.,
`
`v.
`
`GOOGLE LLC,
`
`Plaintiff,
`
`Defendant.
`
`GOOGLE’S MOTION TO DISMISS TOUCHSTREAM’S
`WILLFUL INFRINGEMENT AND INJUNCTIVE RELIEF CLAIMS
`UNDER RULE 12(B)(6)
`
`

`

`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 2 of 18
`
`TABLE OF CONTENTS
`
`
`Page
`
`B.
`
`
`INTRODUCTION ................................................................................................................ 1
`I.
`FACTUAL AND PROCEDURAL BACKGROUND.......................................................... 1
`II.
`LEGAL STANDARD ........................................................................................................... 3
`III.
`IV. ARGUMENT ........................................................................................................................ 4
`A.
`The Pre-suit Business Discussions between Touchstream and Google Did
`Not Provide Notice of the Asserted Patents to Google, Nor Did They
`Provide Notice of the Purported Infringement of those Patents ............................... 4
`Touchstream’s Allegations Regarding General Publicity of one of Its
`Asserted Patents Is Not Sufficient to Show that Google Had Notice of the
`Asserted Patents, Nor that Google Had Notice of the Purported Infringement
`of those Patents ......................................................................................................... 6
`Google’s Patent Prosecution Activity Did Not Provide Notice of the
`Asserted Patents to Google, Nor Did It Provide Notice of the Purported
`Infringement of those Patents ................................................................................... 8
`Touchstream’s Willful Infringement Claims Should Also Be Dismissed in
`Their Entirety .......................................................................................................... 10
`Touchstream Fails to Adequately Plead a Claim for Injunctive Relief .................. 11
`E.
`CONCLUSION ................................................................................................................... 12
`
`C.
`
`D.
`
`V.
`
`
`
`-i-
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`

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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 3 of 18
`
`TABLE OF AUTHORITIES
`
`Page
`
`
`
`
`
`CASES
`
`Adidas Am., Inc. v. Sketchers USA, Inc.,
`2017 WL 2543811 (D. Or. June 12, 2017) .................................................................................10
`
`Affinity Labs of Texas, LLC v. Toyota Motor N. Am.,
`No. W:13-CV-365, 2014 WL 2892285 (W.D. Tex. May 12, 2014) ............................................6
`
`Am. Nat’l Bank & Trust Co. of Chi. v. Allmerica Fin. Life Ins. & Annuity Co.,
`2003 WL 1921815 (E.D. Ill Apr. 21, 2003)................................................................................12
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ..................................................................................................................3, 7
`
`Chalumeau Power Sys. LLC v. Alcatel-Lucent,
`2012 WL 6968938 (D. Del. July 18, 2012) ..................................................................................8
`
`Core Optical Technologies, LLC v. Nokia Corp.
`2020 WL 6126285 (C.D. Cal. Oct. 8, 2020) .................................................................................8
`
`Deere & Co. v. AGCO Corp.,
`No. 18-827-CFC, 2019 WL 668492 (D. Del. Feb. 19, 2019) .......................................................4
`
`Dynamic Data Techs. v. Google LLC,
`No. 19-1529-CFC, 2020 WL 1285852 (D. Del. Mar. 18, 2020) ..........................................5, 7, 9
`
`eBay Inc. v. MercExchange, L.L.C.,
`547 U.S. 388 (2006) ....................................................................................................................11
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) ................................................................................................................10
`
`M & C Innovations, LLC v. Igloo Prod. Corp.,
`No. 4:17-CV-2372, 2018 WL 4620713 (S.D. Tex. July 31, 2018) ............................................11
`
`Meetrix IP, LLC v. Cisco Systems, Inc.,
`2018 WL 8261315 (W.D. Tex. Nov. 30, 2018) ........................................................................5, 8
`
`Mentor Graphics Corporation v. EVE-USA, Inc.
`851 F.3d 1275 (Fed. Cir. 2017)...................................................................................................10
`
`
`
`-ii-
`
`

`

`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 4 of 18
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`
`
`MONEC Holding AG v. Motorola Mobility, Inc.,
`897 F. Supp. 2d 225 (D. Del. 2012) ..........................................................................................5, 7
`
`Parity Networks, LLC v. Cisco Sys., Inc.,
`No. 6:19-CV-00207-ADA, 2019 WL 3940952 (W.D. Tex. July 26, 2019) .....................4, 5, 7, 9
`
`Parus Holdings Inc. v. Apple Inc.
`No. 6:19-cv-00432-ADA, Dkt. 107 (W.D. Tex. Feb. 19, 2020) .............................................8, 10
`
`SoftView v. Apple,
`No. 10-389, 2012 WL 3061027 (D. Del. July 26, 2012) ..............................................................6
`
`State Indus., Inc. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985).................................................................................................5, 9
`
`USC IP Partnership, LP v. Facebook, Inc.,
`No. 6:20-cv-00555-ADA, Dkt. 62 (W.D. Tex. July 23, 2021) (Ex. A) ..................................4, 10
`
`Valinge Innovation AB v. Halstead New England Corp.,
`No. 16-1082-LPS-CJB, 2018 WL 2411218, at *13 (D. Del. May 29, 2018) .....................4, 6, 10
`
`VLSI Tech., LLC v. Intel Corp.,
`No. 6:19-CV-000254-ADA, 2019 WL 11025759 (W.D. Tex. Aug. 6, 2019) ........................1, 10
`
`OTHER AUTHORITIES
`
`Federal Rule of Civil Procedure 8(a)(2) .............................................................................................3
`
`Federal Rules of Civil Procedure Rule 12(b)(6) ...........................................................................1, 12
`
`
`
`-iii-
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`

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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 5 of 18
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`
`
`I.
`
`INTRODUCTION
`
`Defendant Google LLC (“Google”) moves pursuant to Rule 12(b)(6) of the Federal Rules of
`
`Civil Procedure to dismiss Plaintiff Touchstream Technologies, Inc.’s (“Touchstream”) claims that
`
`Google’s conduct willfully infringed U.S. Patent Nos. 8,356,251 (“’251 patent”), 8,782,528 (“’528
`
`patent”), and 8,904,289 (“’289 patent”) (collectively, the “Asserted Patents”) and its request for
`
`injunctive relief.
`
`Willful infringement requires knowledge of both the asserted patents and the alleged
`
`infringement. Touchstream alleges three bases for pre-suit knowledge: (1) business discussions that
`
`occurred almost a decade ago between the parties during which Touchstream purportedly informed
`
`Google about a pending, not issued, patent; (2) one or more press releases from Touchstream
`
`announcing the issuance of one of the Asserted Patents; and (3) citations to the Asserted Patents
`
`and/or the pending applications that eventually issued as the Asserted Patents in certain patents and
`
`patent applications assigned to or filed by Google. As discussed in detail below, none of these bases
`
`are sufficient to support a plausible claim of pre-suit knowledge. Accordingly, Touchstream’s
`
`claims for willful infringement should be dismissed. VLSI Tech., LLC v. Intel Corp., No. 6:19-CV-
`
`000254-ADA, 2019 WL 11025759, at *1 (W.D. Tex. Aug. 6, 2019) (dismissing indirect and willful
`
`infringement claims for failing to sufficiently allege pre-suit knowledge).
`
`In addition, Touchstream’s request for injunctive relief is unsupportable because
`
`Touchstream does not allege any injury that is irreparable and cannot be compensated by monetary
`
`damages.
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`On June 4, 2021, Touchstream sued Google for infringement of the Asserted Patents based
`
`on the functionalities of Google’s Chromecast products. Dkt. 1 (“Compl.”) ¶ 3. Touchstream alleges
`
`infringement due to the Chromecast products’ “functionality and structure that facilitates the
`
`
`
`

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`
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`controlling of presentation content, such as audio and/or video content, on a content presentation
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`device that loads any one of a plurality of different media players.” Id. ¶ 48. Per the Complaint,
`
`Google first unveiled its Chromecast products in July 2013. Id. ¶ 45. In addition to alleging direct
`
`infringement, Touchstream alleges that Google’s infringement of the Asserted Patents “has been, is,
`
`and continues to be willful.” Id. ¶¶ 67, 72, 77.
`
`Touchstream’s willful infringement claims are based solely on Touchstream’s allegation that
`
`Google had pre-suit knowledge of the Asserted Patents. Id. As explained above, Touchstream
`
`asserts three bases for that allegation of pre-suit knowledge: (1) pre-suit communications between
`
`Touchstream and Google, id. ¶¶ 36–40; (2) the alleged publicity of one Asserted Patent, id. ¶¶ 34–
`
`35; and (3) citations to the Asserted Patents and their patent applications in connection with Google
`
`patents and patent applications, id. ¶ 41.
`
`First, Touchstream points to brief, pre-suit discussions between Touchstream and Google
`
`about a potential partnership concerning Touchstream’s technology. Those discussions began in
`
`December 2011 and ended in February 2012 when Google informed Touchstream that it did not
`
`want to pursue a business relationship with Touchstream. Id. ¶¶ 36, 40. Touchstream alleges that,
`
`during these discussions, Touchstream signed Google’s non-disclosure agreement, id. ¶ 38, and
`
`informed Google that Touchstream had filed a patent application covering its technology, id. ¶ 39.
`
`Touchstream alleges that these communications provided Google with knowledge of the Asserted
`
`Patents, id. ¶¶ 42–43, even though the Asserted Patents did not issue until 2013 and 2014, long after
`
`these discussions occurred, id. ¶¶ 24, 26, 26.
`
`Second, Touchstream alleges that Google had pre-suit knowledge of the Asserted Patents, in
`
`part, because “[s]ince at least December 14, 2011, Touchstream has made clear that its revolutionary
`
`product offerings were ‘patent-pending,’” id. ¶ 34, and “[j]ust days after the first [Asserted] Patent
`
`2
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`

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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 7 of 18
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`
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`issued on January 15, 2013, Touchstream issued a press release announcing this patent award,” id.
`
`¶ 35.
`
`Finally, Touchstream alleges that the activities of Google’s patent prosecutors—namely,
`
`their citation to one or more of the Asserted Patents or their underlying applications in connection
`
`with certain Google patents and patent applications—supports Touchstream’s allegation that Google
`
`had pre-suit knowledge of the Asserted Patents. Id. ¶ 41. As summarized in the table below,
`
`Touchstream points to six references to an Asserted Patent in Google patents and ten references to
`
`an application that later issued as an Asserted Patent in Google patents or applications.
`
`Asserted Patent
`
`’251 Patent
`’528 Patent
`’289 Patent
`
`Citations to the
`Asserted Patent
`5
`1
`0
`
`Citations to the Asserted
`Patent’s Application
`6
`1
`3
`
`Nowhere in the Complaint does Touchstream allege that Google had pre-suit notice of
`
`Google’s purported infringement of the Asserted Patents.
`
`III. LEGAL STANDARD
`
`“To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted
`
`as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
`
`(2009). Federal Rule of Civil Procedure 8(a)(2) requires that a complaint provide a defendant with
`
`fair notice of the plaintiff’s claim and the grounds relied upon. Twombly, 550 U.S. at 555. This
`
`obligation “requires more than labels and conclusions” or “a formulaic recitation of the elements of
`
`a cause of action will not do.” Id. “Threadbare recitals of the elements of a cause of action,
`
`supported by mere conclusory statements, do not suffice.” Iqbal, 556 U.S. at 678.
`
`“To state a claim for willful infringement, ‘a plaintiff must allege facts plausibly showing
`
`that as of the time of the claim’s filing, 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,
`
`3
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`

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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 8 of 18
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`
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`that its conduct amounted to infringement of the patent.’” Parity Networks, LLC v. Cisco Sys., Inc.,
`
`No. 6:19-CV-00207-ADA, 2019 WL 3940952, at *3 (W.D. Tex. July 26, 2019) (citing Valinge
`
`Innovation AB v. Halstead New England Corp., No. 16-1082-LPS-CJB, 2018 WL 2411218, at *13
`
`(D. Del. May 29, 2018)). Thus, a claim for willful infringement requires plausible allegations that
`
`the accused infringer both knew of the asserted patents and knew, or should have known of, the
`
`alleged infringement. See id.; see also USC IP Partnership, LP v. Facebook, Inc., No. 6:20-cv-
`
`00555-ADA, Dkt. 62, at *2, 5 (W.D. Tex. July 23, 2021) (holding plaintiff’s allegations that
`
`defendant had “knowledge of the asserted patent and the alleged infringement” sufficient for willful
`
`infringement) (Ex. A); Deere & Co. v. AGCO Corp., No. 18-827-CFC, 2019 WL 668492, at *4 (D.
`
`Del. Feb. 19, 2019) (“[T]o allege a claim for enhanced damages based on willful misconduct, a
`
`plaintiff need only allege facts from which a plausible inference can be drawn that the defendant
`
`acted despite a risk of infringement that was either known or so obvious that it should have been
`
`known.”). “Further, a plaintiff should plead willfulness with sufficient articulation of the relevant
`
`facts.” Parity Networks, 2019 WL 3940952, at *3.
`
`IV. ARGUMENT
`
`None of Touchstream’s three bases for Google’s pre-suit knowledge plausibly supports an
`
`inference that Google knew of any Asserted Patent or knew, or should have known, of the
`
`infringement of any Asserted Patent before the filing of this lawsuit. In addition, Touchstream’s
`
`request for injunctive relief is also unsupported and should be dismissed.
`
`A.
`
`The Pre-suit Business Discussions between Touchstream and Google Did Not
`Provide Notice of the Asserted Patents to Google, Nor Did They Provide Notice
`of the Purported Infringement of those Patents
`
`First, Touchstream alleges that Google knew of the Asserted Patents because Touchstream
`
`engaged in brief business discussions with Google almost a decade before filing this lawsuit. See
`
`Compl. ¶¶ 36–40. However, Touchstream admits that, at the time of those discussions in late 2011
`
`4
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`

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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 9 of 18
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`
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`through early 2012, the Asserted Patents had not yet issued. Id. ¶ 39. Indeed, Touchstream’s
`
`allegations merely claim that Touchstream notified Google that it had a patent pending. Id. As
`
`explained by the Federal Circuit, “[t]o willfully infringe a patent, the patent must exist and one must
`
`have knowledge of it” and “a ‘patent pending’ notice gives one no knowledge whatsoever.” See
`
`State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) (“[A patent pending] is
`
`not even a guarantee that an application has been filed. Filing an application is no guarantee any
`
`patent will issue and a very substantial percentage of applications never result in patents. What the
`
`scope of claims in patents that do issue will be is something totally unforeseeable.”). Accordingly,
`
`even such purported notice of Touchstream’s pending patent does not plausibly show that Google
`
`had knowledge of the issued patent as a matter of law. See id.; see also Meetrix IP, LLC v. Cisco
`
`Systems, Inc., 2018 WL 8261315, at *2 (W.D. Tex. Nov. 30, 2018) (“it is a patent’s claims that put
`
`potential infringers on notice, not the specification”) (emphasis in original); MONEC Holding AG v.
`
`Motorola Mobility, Inc., 897 F. Supp. 2d 225, 232 (D. Del. 2012) (defendants’ purported knowledge
`
`of an original patent did not equate to knowledge of the follow-on reexamined patent).
`
`Moreover, even if Google obtained knowledge of the patent through the brief business
`
`discussions, Touchstream did not plead that the discussions provided any notice of Google’s
`
`purported infringement of the Asserted Patents. See Parity Networks, 2019 WL 3940952, at *3. As
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`one court recently explained, “even assuming that it is plausible that” defendant “somehow knew of
`
`the existence of each of the patents-in-suit, [d]efendants’ Motion would still be well taken—since
`
`the Complaint does not contain plausible allegations that [defendant] would then have known that it
`
`was infringing each of the patents-in-suit.” Dynamic Data Techs. v. Google LLC, No. 19-1529-
`
`CFC, 2020 WL 1285852, at *2 (D. Del. Mar. 18, 2020). Here, Touchstream alleges that the
`
`discussions were for a potential business partnership with Google. See Compl. ¶ 36. Touchstream
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`5
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 10 of 18
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`
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`does not allege that it provided any pre-suit patent notice letter, infringement claim charts, or other
`
`evidence of Google’s alleged infringement. Indeed, such information would have been premature
`
`(and, in fact, impossible), as Touchstream had no patents during the 2011-2012 discussions and, per
`
`the Complaint, the accused technology had yet to be released by Google. See id. ¶ 45 (“Google
`
`unveiled its Chromecast product―which performs the infringing Chromecast functionalities―in
`
`July 2013.”). Accordingly, Touchstream’s allegations fail to plead that Google knew of its purported
`
`infringement of the Asserted Patents.
`
`Thus, Touchstream’s claims of pre-suit willfulness fail as based on the pre-suit discussions
`
`between the parties, and such claims should be dismissed.
`
`B.
`
`Touchstream’s Allegations Regarding General Publicity of one of Its Asserted
`Patents Is Not Sufficient to Show that Google Had Notice of the Asserted
`Patents, Nor that Google Had Notice of the Purported Infringement of those
`Patents
`
`Second, Touchstream’s purported publicity of its patents after the first Asserted Patents
`
`issued does not plausibly support Touchstream’s claim that Google was on notice of the Asserted
`
`Patents before the filing of this lawsuit. Without any specific allegations relating to Google,
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`Touchstream implies that Google should have been on notice of the Asserted Patents merely because
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`Touchstream announced the issuance of one of its patents in one or more press releases. Compl.
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`¶¶ 34–35, 43. Courts have often rejected claims based on this type of non-specific public knowledge.
`
`See Välinge Innovation AB, 2018 WL 2411218, at *2 (dismissing claims even if it was “well known”
`
`that plaintiff had a “substantial patent portfolio”); see also Affinity Labs of Texas, LLC v. Toyota
`
`Motor N. Am., No. W:13-CV-365, 2014 WL 2892285, at *6–7 (W.D. Tex. May 12, 2014) (general
`
`awareness of patent portfolio insufficient). Similarly, Courts consistently reject efforts to impute
`
`third-party knowledge to a defendant without specific factual support. See, e.g., SoftView v. Apple,
`
`No. 10-389, 2012 WL 3061027, at *6 (D. Del. July 26, 2012) (“allegations concerning media
`
`6
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 11 of 18
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`
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`publicity do not plausibly allege pre-suit knowledge” of the patent); MONEC Holding, 897 F. Supp.
`
`2d at 232 (“This court has not been convinced of the sufficiency of pleadings charging knowledge
`
`that is based upon a defendant’s participation in the same market, media publicity and unrelated
`
`litigation by the defendant’s competitors concerning the relevant patent.”).
`
`Here, while Touchstream has cited to certain Touchstream press releases discussing the
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`issuance of one of its patents in January 2013, it has not pleaded any facts that Google (or anyone
`
`else) was aware or even should have been aware of the press releases. See Compl. ¶ 35. Rather,
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`Touchstream appears to allege that Google necessarily should have been aware of the patent because
`
`it was identified in certain public documentation. See id. ¶¶ 35, 43. As in the above cases, such
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`non-specific and threadbare legal conclusions regarding knowledge should be rejected here. See
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`Iqbal, 556 U.S. at 678. Thus, Touchstream’s allegations regarding the purported publicity of one of
`
`its patents does not plausibly allege Google’s knowledge of the Asserted Patents.
`
`Moreover, as in the above, Touchstream’s allegations provide no plausible basis that the
`
`purported publicity of its patents would have put Google on notice of Google’s purported
`
`infringement of the patents. See Parity Networks, 2019 WL 3940952, at *3; Dynamic Data Techs.,
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`2020 WL 1285852, at *2. Indeed, identification of the issuance of a patent does not provide any
`
`additional detail as to how other parties, including Google, would have infringed that patent. And
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`again, this would have been impossible because, as alleged in the Complaint, Google did not unveil
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`Chromecast until several months after the press releases. See Compl. ¶ 45.
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`Therefore, Touchstream’s claims of pre-suit willfulness also fail as based on the purported,
`
`pre-suit publicity of the Asserted Patents, and such claims should be dismissed.
`
`7
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 12 of 18
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`
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`C.
`
`Google’s Patent Prosecution Activity Did Not Provide Notice of the Asserted
`Patents to Google, Nor Did It Provide Notice of the Purported Infringement of
`those Patents
`
`Third, Touchstream’s allegations relating to Google’s purported knowledge of the Asserted
`
`Patents through Google’s prosecution activity similarly fail to plausibly allege pre-suit willfulness.
`
`Touchstream alleges that patents and applications assigned to and filed by Google cite the Asserted
`
`Patents and/or the patent applications that issued as the Asserted Patents. See Compl. ¶ 41.
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`However, this and other Courts have found that a defendant’s prosecution activity is insufficient to
`
`put the defendant on notice of the Asserted Patents. For example, in Meetrix IP, LLC v. Cisco
`
`Systems, Inc., the Court found that even though the “parent application of the Asserted Patents was
`
`cited in the course of” five defendant-owned patents, defendant’s “prosecution activity is too
`
`attenuated to plausibly infer that [defendant] had pre-suit knowledge of the Asserted Patents.” 2018
`
`WL 8261315, at *2 (W.D. Tex. Nov. 30, 2018). Consistent with this, the Court recently explained
`
`in Parus Holdings Inc. v. Apple Inc., that “[t]he fact that [defendant] may have gone and gotten a
`
`patent and somewhere in one of those patents, they identify the patent that is being is asserted, that’s
`
`not going to be good enough to me for actual notice.” No. 6:19-cv-00432-ADA, Dkt. 107, at *5
`
`(W.D. Tex. Feb. 19, 2020) (Ex. B). Other courts are in accord, such as in Core Optical Technologies,
`
`LLC v. Nokia Corp., where the plaintiff argued that the defendant owned “six separate U.S. patents
`
`against which the [asserted patent] was cited as prior art during prosecution” and “that the knowledge
`
`of a party’s patent prosecution lawyers can be imputed to the party.” 2020 WL 6126285, at *6–7
`
`(C.D. Cal. Oct. 8, 2020). The Court, however, found that despite the patent citations, the allegations
`
`did “not give rise to the plausible inference that [defendants] had pre-suit knowledge of the” asserted
`
`patent. Id.; see also Chalumeau Power Sys. LLC v. Alcatel-Lucent, 2012 WL 6968938, at *1 (D.
`
`Del. July 18, 2012) (no plausible knowledge where plaintiff alleged asserted patents were cited as
`
`prior art during defendants’ patent prosecution).
`
`8
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 13 of 18
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`
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`Here, likewise, Touchstream’s allegations are equally deficient. Touchstream alleges that
`
`certain Google patents cite to the Asserted Patents or their patent applications. Other than listing the
`
`various citations, however, Touchstream’s Complaint does not explain how these citations plausibly
`
`show that Google had knowledge of the Asserted Patents in either 2011 (during the pre-suit business
`
`discussions) or in 2013 (when Touchstream’s first patent was purportedly publicized). See Compl.
`
`¶¶ 42–43. Regardless, as in the above cases, the knowledge of Google’s patent prosecution counsel
`
`should not be imputed to Google to plausibly show that Google was on notice of the Asserted Patents
`
`to establish pre-suit willful infringement.
`
`In addition, the citations listed by Touchstream predominantly implicate the ’251 Patent and
`
`do not equally apply to the ’528 and ’289 patents. See supra Section II (chart describing
`
`Touchstream’s allegations relating to Google’s prosecution activity). In particular, for the ’289
`
`patent, Touchstream identifies Google patents and applications that cite to the patent application that
`
`ultimately led to the ’289 patent, not the ’289 patent itself. As discussed above, allegations regarding
`
`knowledge of a patent application do not plausibly allege knowledge of the patent itself. See State
`
`Indus., 751 F.2d at 1236. Thus, Touchstream’s allegations relating to prosecution activity are
`
`insufficient to plausibly show that Touchstream had pre-suit knowledge of the patents.
`
`Finally, and again, even if Touchstream’s allegations were sufficient to find that Google
`
`plausibly had knowledge of the Asserted Patents, these allegations do not support that Google was
`
`also on notice of its purported infringement of those patents to state a claim for pre-suit willful
`
`infringement. See Parity Networks, 2019 WL 3940952, at *3; Dynamic Data Techs., 2020 WL
`
`1285852, at *2.
`
`Therefore, Touchstream’s claims of pre-suit willfulness also fail as based on purported
`
`knowledge gained through Google’s prosecution activity, and such claims should be dismissed.
`
`9
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 14 of 18
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`
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`D.
`
`Touchstream’s Willful Infringement Claims Should Also Be Dismissed in Their
`Entirety
`
`The analysis above applies equally to Touchstream’s claims of post-suit willfulness. In
`
`Mentor Graphics Corporation v. EVE-USA, Inc., decided after Halo, the Federal Circuit affirmed
`
`that “in ordinary circumstances, willfulness will depend on an infringer’s prelitigation conduct”
`
`because “a patentee must have a good faith basis for alleging willful infringement.” 851 F.3d 1275,
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`1295 (Fed. Cir. 2017) (quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007)). As
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`the Supreme Court explained, “culpability is generally measured against the knowledge of the actor
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`at the time of the challenged conduct.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1933
`
`(2016). District courts examining this controlling authority have thus concluded that post-suit
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`knowledge alone fails to support a pleading of willful infringement. See, e.g., Parus Holdings, No.
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`6:19-cv-00432-ADA, Dkt. 107, at *35-37, 46-48, 51-52 (Ex. B); Valinge Innovation AB, 2018 WL
`
`2411218, at *11; Adidas Am., Inc. v. Sketchers USA, Inc., 2017 WL 2543811, at *4 (D. Or. June 12,
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`2017). As one court recently held, “the complaint itself cannot serve as the basis for a defendant’s
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`actionable knowledge,” because “[t]he purpose of a complaint is not to create a claim but rather to
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`obtain relief for an existing claim.” VLSI Tech. LLC v. Intel Corp., 2019 WL 1349468, at *2 (D.
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`Del. Mar. 26, 2019). While Touchstream does not yet allege that the complaint in this case
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`demonstrates the required knowledge for willful infringement, some courts, including this Court,
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`have also held that a pleading of post-suit knowledge alone can form the basis of willful
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`infringement. See, e.g., USC IP Partnership, No. 6:20-cv-00555-ADA, Dkt. 62, at *5 (Ex. A).
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`Those decisions, however, as discussed above, are contrary to precedent.
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`Because Touchstream fails to plead facts supporting pre-suit knowledge, Touchstream’s
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`claims of willful infringement must be dismissed in their entirety.
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`10
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 15 of 18
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`
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`E.
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`Touchstream Fails to Adequately Plead a Claim for Injunctive Relief
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`Touchstream’s request for permanent injunctive relief cannot stand, because Touchstream
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`fails to plead facts plausibly supporting irreparable harm, a necessary element of such a claim. With
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`respect to irreparable harm, the sole statements made by Touchstream are in Paragraphs 68, 73, and
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`78 of the Complaint, which are all substantively identical for each Asserted Patent:
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`68. Touchstream has been and will continue to be irreparably harmed by
`Google’s infringing acts, requiring the entry of a permanent injunction to prevent
`Google’s further infringement of the ’251 patent because Touchstream does not
`have another adequate remedy at law.
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`To establish entitlement to injunctive relief, a plaintiff must demonstrate: “(1) that it has
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`suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are
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`inadequate to compensate for that injury; (3) that, considering the balance of hardships between the
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`plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not
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`be disserved by a permanent injunction.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391
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`(2006).
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`Here, Touchstream fails to plead facts to plausibly support a finding that it has suffered an
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`irreparable injury that is not compensable by monetary damages. The only fact purportedly
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`indicating irreparable harm is the allegation that “the efforts of Touchstream and Touchstream’s
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`partners to appropriately monetize Mr. David Strober’s inventions were significantly hindered by
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`infringement of the Touchstream Patents, including by Google.” Compl. ¶ 33. Despite having the
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`opportunity to do so, Touchstream fails to state any facts describing any purportedly competing
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`products that Touchstream purportedly develops and/or sells, or the irreparable harm that has
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`resulted from Google’s continued sale of the accused instrumentalities. Absent such allegations,
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`Touchstream’s request for injunctive relief must be dismissed. M & C Innovations, LLC v. Igloo
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`Prod. Corp., No. 4:17-CV-2372, 2018 WL 4620713, at *6 (S.D. Tex. July 31, 2018) (dismissing
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`11
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 16 of 18
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`
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`request for lost profits and a permanent injunction with prejudice); see also Am. Nat’l Bank & Trust
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`Co. of Chi. v. Allmerica Fin. Life Ins. & Annuity Co., 2003 WL 1921815, at *4 (E.D. Ill Apr. 21,
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`2003) (dismissing request for injunctive relief in contract dispute).
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`V.
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`CONCLUSION
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`For the foregoing reasons, Touchstream’s complaint fails to state a plausible claim for willful
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`(or at least pre-suit willful) patent infringement and injunctive relief. Google therefore respectfully
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`requests that the Court dismiss such claims under Rule 12(b)(6).
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`12
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 17 of 18
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`
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`Dated: August 13, 2021
`
`By: /s/ Michael C. Hendershot with
`permission, by Michael E. Jones
`Michael C. Hendershot
`
`
`
`JONES DAY
`Tharan Gregory Lanier (Pro hac vice pending)
`CA State Bar No. 138784
`E-mail: tglanier@jonesday.com
`Michael C. Hendershot (Pro hac vice pending)
`CA State Bar No. 211830
`E-mail: mhendershot@jonesday.com
`Evan M. McLean (Pro hac vice pending)
`CA State Bar No. 280660
`E-mail: emclean@jonesday.com
`1755 Embarcadero Road
`Palo Alto, CA 94303
`Telephone:
`(650) 739-3939
`Facsimile:
`(650) 739-3900
`
`
`POTTER MINTON PC
`Michael E. Jones
`TX State Bar No. 10929400
`E-mail: mikejones@potterminton.com
`Patrick C. Clutter
`TX State Bar No. 24036374
`E-mail: patrickclutter@potterminton.com
`110 N. College Ave., Suite 500
`Tyler, TX 75702
`Telephone:
` (903) 597-8311
`Facsimile:
` (903) 593-0846
`
`Attorneys for Defendant
`GOOGLE LLC
`
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`13
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`Case 6:21-cv-00569-ADA Document 14 Filed 08/13/21 Page 18 of 18
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing was electronically filed with the Clerk
`of Court using the CM/ECF system, which will send a notification of such filing (“NEF”) to all
`counsel of record who have appeared in this case per L