Case 6:21-cv-00569-ADA Document 14-2 Filed 08/13/21 Page 1 of 6
`Case 6:21-cv-00569-ADA Document 14-2 Filed 08/13/21 Page 1 of 6
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`EXHIBIT A
`EXHIBIT A
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`Case 6:21-cv-00569-ADA Document 14-2 Filed 08/13/21 Page 2 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`USC IP PARTNERSHIP, L.P.,
` Plaintiff,
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`v.
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`FACEBOOK, INC.,
` Defendant.
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`6:20-CV-00555-ADA
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Defendant Facebook, Inc.’s (“Facebook”) Motion to Dismiss Plaintiff
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`USC IP Partnership, L.P.’s (“USC”) direct infringement, indirect infringement, and willful
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`infringement claims pursuant to Federal Rule of Civ Procedure 12(b)(6). ECF No. 9. After careful
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`consideration of the briefs and applicable law, the Court is of the opinion that Facebook’s Motion
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`should be DENIED-IN-PART and GRANTED-IN-PART.
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`I. LEGAL STANDARDS
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`Rule 12(b)(6) requires that a complaint contain sufficient factual matter, if accepted as true,
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`to “‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
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`(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To meet this factual plausibility
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`standard, the plaintiff must plead “factual content that allows the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged,” based on “more than a sheer
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`possibility that a defendant has acted unlawfully.” Id. “Threadbare recitals of the elements of a
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`cause of action, supported by mere conclusory statements, do not suffice.” Id. However, in
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`resolving a motion to dismiss for failure to state a claim, the question is “not whether [the plaintiff]
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`will ultimately prevail, . . . but whether [the] complaint was sufficient to cross the federal court’s
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`threshold.” Skinner v. Switzer, 562 U.S. 521, 530 (2011). “The court’s task is to determine whether
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`the plaintiff has stated a legally cognizable claim that is plausible, not to evaluate the plaintiff's
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`likelihood of success.” Lone Star Fund V (U.S.), L.P. v. Barclays Bank PLC, 594 F.3d 383, 387 (5th
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`Cir. 2010) (citing Iqbal, 556 U.S. at 678).
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`To allege indirect infringement, the plaintiff must plead specific facts sufficient to show that
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`the accused infringer had actual knowledge of the patents-in-suit, or was willfully blind to the
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`existence of the patents-in-suit. Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766, 769
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`(2011) (“[I]nduced infringement under § 271(b) requires knowledge that the induced acts constitute
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`patent infringement” or at least “willful blindness” to the likelihood of infringement.); Commil USA,
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`LLC v. Cisco Sys., Inc., 575 U.S. 632, 639 (2015) (“Like induced infringement, contributory
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`infringement requires knowledge of the patent in suit and knowledge of patent infringement.”). A
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`showing of willful blindness requires that “(1) the defendant must subjectively believe that there is a
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`high probability that a fact exists and (2) the defendant must take deliberate actions to avoid
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`learning of that fact.” Global-Tech, 563 U.S. at 769.
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`Similarly, to allege willful infringement, the plaintiff must plausibly allege the “subjective
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`willfulness of a patent infringer, intentional or knowing.” Halo Electronics, Inc. v. Pulse
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`Electronics, Inc., 136 S.Ct. 1923, 1933 (2016). This requires a plaintiff to allege facts plausibly
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`showing that the accused infringer: “(1) knew of the patent-in-suit; (2) after acquiring that
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`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).
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`A. Direct Infringement
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`II. ANALYSIS
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`Facebook contends that Claim 1 of the ’300 patent, the only asserted claim in USC’s
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`Complaint, requires an “intent engine,” but the Complaint does not provide any description of the
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`purposed “intent engine” in the accused Facebook product. ECF No. 9 at 5. USC’s Complaint
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`identifies “Facebook News Feed” as the accused product. ECF No. 1 at ¶ 31. The Complaint alleges
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`that by making and using the accused product, “Defendant receives input parameters from a web
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`browser displaying a webpage” and “Defendant processes ‘signals,’ including input parameters,
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`related to the visitor to the Accused Instrumentalities to infer intent,” and “Defendant assigns a
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`relevancy score for each story, based on at least the signals, which is a representation of how closely
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`the story matches the visitor’s inferred intent.” Id. at ¶¶ 36-37, 40 (emphasis added); see also ECF
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`No. 9 at 5-6. In explaining the concept of the asserted ’300 patent, the Complaint states that “[t]he
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`intent engine processes the at least one input parameter to determine at least one inferred intent”
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`and “[t]he inferred intent is displayed on a webpage so that the visitor can confirm his or her intent.”
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`ECF No. 1 at ¶ 26 (emphasis added). Comparing USC’s explanation of the ’300 patent and the
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`allegations about the accused Facebook product, the Court finds that the Complaint has sufficiently
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`identified an “intent engine” as required in the asserted claim. To be clear, a plaintiff is not required
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`to use the exact same term or language as used in the asserted claim when alleging infringement by
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`the accused products. Rather, the plaintiff only needs to plead “factual content that allows the court
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`to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556
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`U.S. at 678 (emphasis added). Here, based on the allegations in USC’s Complaint, a reasonable
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`inference can be drawn that Facebook’s accused product includes an “intent engine.” To the extent
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`that Facebook argues that USC has not identified any specific feature of the accused product that
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`constitutes an “intent engine,” a plaintiff should not be barred at the dismissal stage “when the
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`operation of
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`[the accused product]
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`is not ascertainable without discovery.” K-Tech
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`Telecommunications, Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1286 (Fed. Cir. 2013).
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`Facebook further contends that USC’s Complaint does not “explain how such an ‘intent
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`engine’ is used to meet the claim limitations.” ECF No. 9 at 5 (emphasis in original). However,
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`USC’s Complaint does explain how an “intent engine” is used in the accused Facebook product. See
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`ECF No. 1 at ¶¶ 36-44. Further, a plaintiff is not required to prove its case at the pleading stage—
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`such task is more appropriately assigned to infringement contentions. At the pleading stage, “[t]he
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`court’s task is to determine whether the plaintiff stated a legally cognizable claim that is plausible,
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`not to evaluate the plaintiff's likelihood of success.” Lone Star Fund V (U.S.), L.P. v. Barclays Bank
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`PLC, 594 F.3d 383, 387 (5th Cir. 2010); see also ID Image Sensing LLC v. Omnivision
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`Technologies, Inc., No. 20-cv-136-RGA, 2020 U.S. Dist. LEXIS 220189, *16 (D. Del. Nov. 24,
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`2020) (holding that it is unnecessary for a complaint to “establish” or “prove” each element of an
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`asserted claim is met; instead, a plaintiff must only allege facts that “plausibly” indicate that the
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`accused products contain each of the limitations found in the asserted claim).
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`Therefore, the Court finds that USC has sufficiently pled direct infringement in its
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`Complaint and DENIES Facebook’s motion to dismiss as to USC’s direct infringement claim.
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`B. Indirect Infringement and Willful Infringement
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`As for Facebook’s knowledge of the asserted patent, USC alleges that “Defendant has
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`knowledge of the Asserted Patent at least as of the date when it was notified of the filing of this
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`action” and “Defendant has a policy or practice of not reviewing the patents of others (including
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`instructing its employees to not review the patents of others), and thus has been willfully blind of
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`USC IP’s patent rights.” ECF No. 1 at ¶¶ 53-54. Facebook contends that such allegations are
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`insufficient to allege that Facebook had any pre-suit knowledge of any alleged infringement of the
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`’300 patent, and therefore the Court should dismiss USC’s (1) pre-suit indirect infringement claims,
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`and (2) the entire or at least pre-suit willful infringement claim.
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`Because USC’s the Complaint does not plead sufficient facts that would support an
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`allegation of pre-suit knowledge, the Court GRANTS Facebook’s motion to dismiss USC’s pre-suit
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`indirect and willful infringement claims. However, given that it may have been impossible for USC
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`to allege any pre-suit knowledge without the benefit of fact discovery, in accordance with the
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`Court’s usual practice, the Court permits USC to amend its Complaint after the start of fact
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`discovery to include pre-suit indirect and willful infringement claims, if it is able to elicit sufficient
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`facts to support such allegations. See, e.g., Parus Holdings Inc. v. Apple Inc., No. 6:19-cv-00432-
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`ADA, Dkt. 101 (W.D. Tex. Jan. 31, 2020); Castlemorton Wireless, LLC, v. Comcast Corp. et al.,
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`No. 6:20-cv-00034-ADA, Minute Entry Granting Motion to Dismiss (July 25, 2020) (text order
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`only). Further, since USC alleges that Facebook has knowledge of the asserted patent and the
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`alleged infringement at least at the commencement of this action, the Court finds that USC has
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`sufficiently alleged its post-suit indirect and willful infringement claims.
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`III. CONCLUSION
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`For the foregoing reasons, the Court DENIES Facebook’s Motion to dismiss USC’s direct
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`infringement claim and post-suit indirect and willful infringement claims and GRANTS Facebook’s
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`Motion to dismiss USC’s pre-suit indirect and willful infringement claims. However, USC is
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`allowed to amend its Complaint and re-plead pre-suit indirect and willful infringement claims if it is
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`able to elicit sufficient facts during fact discovery to support such allegations.
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`SIGNED this 23rd day of July, 2021.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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