Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 1 of 16
`
`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
`
`§§§§§§§§§§
`
`
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`v.
`
`GOOGLE LLC,
`
`Plaintiff,
`
`Defendant.
`
`GOOGLE’S REPLY TO ITS MOTION TO DISMISS TOUCHSTREAM’S
`WILLFUL INFRINGEMENT AND INJUNCTIVE RELIEF CLAIMS
`UNDER RULE 12(B)(6)
`
`

`

`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 2 of 16
`
`TABLE OF CONTENTS
`
`
`Page
`
`INTRODUCTION ................................................................................................................ 1
`ARGUMENT ........................................................................................................................ 2
`A.
`Touchstream’s Allegations Fail to Plead Pre-Suit Knowledge of
`Infringement, Let Alone Any Egregious Conduct .................................................... 2
`Touchstream’s Allegations Also Fail to Adequately Plead Pre-Suit
`Knowledge of the Asserted Patents, Alone or in Combination ................................ 3
`1.
`Touchstream’s Purported Publicity Allegations Are Conclusory and
`Speculative .................................................................................................... 4
`Google’s Prosecution Activity Is Insufficient to Establish
`Knowledge of the Patents ............................................................................. 5
`Touchstream’s Allegations Taken Together Are Based on Failed
`Premises and Similarly Are Deficient........................................................... 7
`Touchstream’s Pre- and Post-Suit Willful Infringement Claims Should Be
`Dismissed in Their Entirety ...................................................................................... 8
`Touchstream Fails to Adequately Plead a Claim for Injunctive Relief .................... 9
`D.
`CONCLUSION ................................................................................................................... 10
`
`B.
`
`C.
`
`2.
`
`3.
`
`-i-
`
`
`
`
`I.
`II.
`
`III.
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`
`
`
`
`

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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 3 of 16
`
`TABLE OF AUTHORITIES
`
`Page
`
`
`
`
`
`CASES
`
`Affinity Labs of Texas, LLC v. Toyota Motor N. Am.,
`No. W:13-CV-365, 2014 WL 2892285 (W.D. Tex. May 12, 2014) ............................................5
`
`Am. Nat’l Bank & Tr. Co. of Chi. v. Allmerica Fin. Life Ins. & Annuity Co.,
`2003 WL 1921815 (E.D. Ill. Apr. 21, 2003).................................................................................9
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ......................................................................................................................5
`
`Collegenet, Inc. v. Applyyourself, Inc.,
`No. CV–02–484-HU, 2004 WL 2050489 (D. Or. Jan. 20, 2004) .................................................4
`
`Commonwealth Sci. & Indus. Research Org. v. Buffalo Tech. Inc.,
`492 F. Supp. 2d 600 (E.D. Tex. 2007) ........................................................................................10
`
`Frac Shack Inc. v. AFD Petroleum (Texas) Inc.,
`No. 7:19-cv-00026-DC, 2019 WL 3818049 (W.D. Tex. June 13, 2019) .....................................3
`
`Global Sessions, LP v. JPMorgan Chase & Co.,
`No. A–13–CA–688, 2013 WL 12086369 (W.D. Tex. Nov. 18, 2013).....................................2, 6
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) ..................................................................................................................2
`
`M&C Innovations v. Igloo Prod. Corp.,
`No. 4:17-CV-2372, 2018 WL 4620713 (S.D. Tex. July 31, 2018) ........................................9, 10
`
`Meetrix IP, LLC v. Cisco Systems, Inc.,
`No. 1-18-CV-309-LY, 2018 WL 8261315 (W.D. Tex. Nov. 30, 2018) .......................................6
`
`Mentor Graphics Corp. v. EVE-USA Inc.,
`851 F.3d 1275 (Fed. Cir. 2017), cert. dismissed, 139 S. Ct. 44 (2018) ........................................8
`
`MONEC Holding AG v. Motorola Mobility, Inc.,
`897 F. Supp. 2d 225 (D. Del. 2012) ..............................................................................................5
`
`Oxygenator Water Techs., Inc. v. Tennant Co.,
`No. 20-cv-358 (ECT/HB), 2020 WL 4572062 (D. Minn. Aug. 7, 2020) ...................................10
`
`
`
`-ii-
`
`

`

`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 4 of 16
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`
`
`Parity Networks, LLC v. Cisco Sys., Inc.,
`No. 6:19-CV-00207-ADA, 2019 WL 3940952 (W.D. Tex. July 26, 2019) .........................2, 6, 8
`
`Parus Holdings, Inc. v. Apple Inc.,
`No. 6:19-cv-00432-ADA, Dkt. 107 (Mot. Ex. B) .............................................................5, 6, 7, 8
`
`Radware, Ltd. v. A10 Networks, Inc.,
`No. C–13–02021-RMW, 2014 WL 61047 (N.D. Cal. Jan. 7, 2014) ........................................4, 7
`
`SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd.,
`396 F. Supp. 3d 323 (S.D.N.Y. 2019)...........................................................................................6
`
`SiOnyx, LLC v. Hamamatsu Photonics K.K.,
`330 F. Supp. 3d 574 (D. Mass. 2018) .......................................................................................6, 7
`
`SoftView LLC v. Apple Inc.,
`No. 10-389-LPS, 2012 WL 3061027 (D. Del. July 26, 2012) ..............................................5, 7, 8
`
`Software Research, Inc. v. Dynatrace LLC,
`316 F. Supp. 3d 1112 (N.D. Cal. 2018) ......................................................................................10
`
`State Indus., Inc. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985).....................................................................................................6
`
`Valinge Innovation AB v. Halstead New England Corp.,
`No. 16-1082-LPS-CJB, 2018 WL 2411218 (D. Del. May 29, 2018) ...........................................3
`
`VLSI Tech. LLC v. Intel Corp.,
`No. 18-966-CFC, 2019 WL 1349468 (D. Del. Mar. 26, 2019) ....................................................8
`
`WCM Industries, Inc. v. IPS Corp.,
`721 F. App’x 959 (Fed. Cir. 2018) ...............................................................................................6
`
`Winter v. Nat. Res. Def. Council, Inc.,
`555 U.S. 7 (2008) ..........................................................................................................................9
`
`
`
`-iii-
`
`

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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 5 of 16
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`
`
`I.
`
`INTRODUCTION
`
`None of the disconnected bases Touchstream alleges for pre-suit knowledge are themselves
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`sufficient under the law to plead pre-suit or even post-suit willful infringement, nor are its threadbare
`
`allegations sufficient to plead injunctive relief. See Dkt. 14 (“Mot.”) at 4-11. Touchstream’s
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`opposition (Dkt. 18) largely concedes as much, instead arguing that Google failed to address the
`
`totality of Touchstream’s allegations, while attempting to buttress its deficient allegations with
`
`attorney argument. But Touchstream ignores four deficiencies in its Complaint, which require
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`dismissal of its pre- and post-suit willfulness claims and request for injunctive relief:
`
`● First, Touchstream’s Complaint fails to allege any pre-suit knowledge of purported
`infringement, let alone any egregious conduct. Instead, Touchstream improperly
`collapses this requirement into the separate requirement of knowledge of the Asserted
`Patents.
`
`● Second, while Touchstream essentially admits that its separate bases of knowledge
`of the Asserted Patents are insufficient by themselves, it ignores that it has no
`allegations in its Complaint purportedly connecting the two bases. Even if it did,
`Touchstream’s allegations regarding purported publicity through press releases and
`prosecution activity rely on a series of unreasonable inferences to allege the
`knowledge of the patents necessary for pre-suit willful infringement.
`
`● Third, Federal Circuit precedent requires–and this Court has agreed—that pre-suit
`knowledge is required for willfulness claims to survive dismissal. Because
`Touchstream’s pre-suit willfulness claims fail, its post-suit willfulness claims should
`also fail.
`
`● Fourth, Touchstream fails to allege any facts, and most notably with respect to
`irreparable harm, to state a claim for injunctive relief.
`
`Thus, Touchstream’s (1) pre-suit willfulness claims; (2) post-suit willfulness claims; and (3) request
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`for injunctive relief should each be dismissed.
`
`
`
`

`

`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 6 of 16
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`
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`II.
`
`ARGUMENT
`
`A.
`
`Touchstream’s Allegations Fail to Plead Pre-Suit Knowledge of Infringement,
`Let Alone Any Egregious Conduct
`
`Touchstream does not dispute that to plead willful infringement, it must plausibly allege both
`
`knowledge of infringement and knowledge of the asserted patents.1 See Dkt. 18 at 6. For knowledge
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`of infringement, Touchstream relies on insufficient allegations that its first patent was generally
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`“widely publicized” and then cited during prosecution of certain Google patents. See id. at 1.
`
`However, Touchstream relies on the same allegations for knowledge of the patents. Touchstream
`
`does not allege that Google was provided any notice that it was infringing any patents (such as
`
`through a formal notice letter), other than allegations that Google released a purportedly infringing
`
`product. See Mot. at 5-6, 7, 9. These allegations are typical in patent litigation cases, and certainly
`
`do not rise to the level of egregious conduct required for willful infringement. See Halo Elecs., Inc.
`
`v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016) (willful infringement requires “egregious case[ ]
`
`of culpable behavior,” which has alternately been described as conduct that is “willful, wanton,
`
`malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a
`
`pirate”). Touchstream’s argument therefore collapses knowledge of infringement into mere
`
`knowledge of the patents, contrary to this Court’s pleading standard, which requires the plaintiff to
`
`specifically allege knowledge of infringement. See Parity Networks, LLC v. Cisco Sys., Inc., No.
`
`6:19-CV-00207-ADA, 2019 WL 3940952, at *3 (W.D. Tex. July 26, 2019) (“To state a claim for
`
`willful infringement, ‘a plaintiff must allege facts plausibly showing that as of the time of the claim’s
`
`
`1 To the extent Touchstream does contest such a requirement, Touchstream is incorrect as shown in
`Google’s motion. See Mot. at 3-4, 5-6. Touchstream’s citation to Global Sessions, LP v. JPMorgan
`Chase & Co., in its “Legal Authority” section similarly contradicts the Court’s current prevailing
`pleading standard. Compare Dkt. 18 at 3 (citing Global Sessions, LP v. JPMorgan Chase & Co.,
`No. A–13–CA–688, 2013 WL 12086369, at *3 (W.D. Tex. Nov. 18, 2013)) with Mot. at 3-4 (citing
`Parity Networks, LLC v. Cisco Sys., Inc., No. 6:19-CV-00207-ADA, 2019 WL 3940952, at *3 (W.D.
`Tex. July 26, 2019)).
`
`2
`
`

`

`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 7 of 16
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`
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`filing, the accused infringer . . . knew, or should have known, that its conduct amounted to
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`infringement of the patent.’” (citing Valinge Innovation AB v. Halstead New England Corp., No.
`
`16-1082-LPS-CJB, 2018 WL 2411218, at *13 (D. Del. May 29, 2018)) (emphasis added)).
`
`Touchstream’s single citation to Frac Shack purportedly finding otherwise is distinguishable
`
`because there, the parties had “an extensive history of patent litigation concerning the same
`
`technology and allegedly infringing device” and it was plausible that “[p]atent counsel were
`
`involved on all sides who most certainly were monitoring the actions of the opposing parties (or
`
`were likely to have been doing so).” See Frac Shack Inc. v. AFD Petroleum (Texas) Inc., No. 7:19-
`
`cv-00026-DC, 2019 WL 3818049, at *5 (W.D. Tex. June 13, 2019). Touchstream does not allege
`
`such facts. Instead, Touchstream’s Complaint is limited to conclusory allegations that Google knew
`
`of the patent and released a purportedly infringing product.
`
`Therefore, Touchstream has not come close to plausibly alleging that Google’s purported
`
`infringement was knowing or egregious and Touchstream’s claims of pre-suit willful infringement
`
`should be dismissed on this ground alone.
`
`B.
`
`Touchstream’s Allegations Also Fail to Adequately Plead Pre-Suit Knowledge
`of the Asserted Patents, Alone or in Combination
`
`Touchstream’s argument that it sufficiently pled knowledge of the Asserted Patents rests on
`
`several fundamentally flawed arguments and assumptions. Indeed, Touchstream admits that its
`
`bases for knowledge standing alone are insufficient to plausibly allege pre-suit knowledge of the
`
`patents. Touchstream’s Complaint fails for three reasons: (1) Touchstream’s press releases
`
`regarding only one of its patents do not lead to the inference that Google (or anyone else) knew or
`
`was willfully blind to the claims of that patent (and the claims of Touchstream’s remaining
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`portfolio); (2) prosecution activity is legally insufficient to plausibly establish the knowledge of the
`
`patents required for willful infringement; and (3) the Complaint otherwise lacks any allegations
`
`3
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`

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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 8 of 16
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`
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`purporting to link the facts that Touchstream claims should be “viewed as a whole,” a claim that
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`Touchstream first attempts to set out in its opposition. In particular, Touchstream does not allege in
`
`the Complaint how Google’s prosecution activity supports the assertion that Google had knowledge
`
`of the Asserted Patents when they were purportedly publicized by Touchstream, nor can it.2
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`Regardless, as discussed below, Touchstream cannot rely on either of its remaining bases for
`
`knowledge separately, nor taken together.
`
`1.
`
`Touchstream’s Purported Publicity Allegations Are Conclusory and
`Speculative
`
`First, Touchstream’s publicity allegations hinge on the argument that Google was aware of
`
`or should have been aware of Touchstream’s press releases. Touchstream, however, does not allege
`
`that Google reviews the press releases of other companies, and any such allegations would be purely
`
`speculative. Touchstream acknowledges that the cases it cites are inapposite because, unlike here,
`
`they involve affirmative allegations regarding the defendant’s knowledge of the asserted patents.
`
`See Radware, Ltd. v. A10 Networks, Inc., No. C–13–02021-RMW, 2014 WL 61047, at *4 (N.D. Cal.
`
`Jan. 7, 2014) (plaintiff had alleged that defendant “regularly reviewed competitors’ intellectual
`
`property-related press releases”); Collegenet, Inc. v. Applyyourself, Inc., No. CV–02–484-HU, 2004
`
`WL 2050489, at *12 (D. Or. Jan. 20, 2004) (plaintiff alleged that defendant’s CEO received an email
`
`attaching the press release). There are no such allegations here. And, even if Touchstream made
`
`such allegations, they would require an unwarranted logical inference from a patent owner’s routine
`
`press release to the public generally and then to Google specifically, an inference for which
`
`Touchstream has provided no legal support.
`
`
`2 Touchstream does not rely on the 2011-2012 discussions as a basis for pre-suit knowledge in its
`opposition, nor can it. See Mot. at 4-6. As shown in Google’s motion, as Touchstream tacitly
`concedes, these discussions are insufficient to establish knowledge for willfulness, and they are also
`irrelevant to this patent case.
`
`4
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`

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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 9 of 16
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`
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`Moreover, Touchstream claims that “Google’s cases are distinguishable because they
`
`consider patent publicity in isolation” (Dkt. 18 at 10), but Touchstream only attempts to distinguish
`
`one case, SoftView LLC v. Apple Inc. Indeed, Google also cited cases dismissing willfulness claims
`
`with a combination of allegations that are similar to Touchstream’s allegations here. See Mot. at 6-
`
`7 (citing Affinity Labs of Texas, LLC v. Toyota Motor N. Am., No. W:13-CV-365, 2014 WL 2892285,
`
`at *6 (W.D. Tex. May 12, 2014) (dismissing plaintiff’s claims despite allegations that its “patent
`
`family ha[d] been cited by major businesses” in the relevant industry and that plaintiff had
`
`“previously sued [defendant] for the infringement of similar patents” and so defendant “acted with
`
`willful blindness when it chose to market and sell its products before considering Plaintiff’s
`
`patents”); MONEC Holding AG v. Motorola Mobility, Inc., 897 F. Supp. 2d 225, 232 (D. Del. 2012)
`
`(dismissing as insufficient “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.”)). Regardless, as discussed in the cases cited by Google
`
`(Mot. at 6-7), Touchstream has not pleaded any specific facts that Google (or anyone else) was aware
`
`or even should have been aware of the press releases alleged by Touchstream. Rather, these are the
`
`type of non-specific and threadbare legal conclusions regarding knowledge that should be rejected.
`
`See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
`
`2.
`
`Google’s Prosecution Activity Is Insufficient to Establish Knowledge of
`the Patents
`
`Second, Touchstream’s opposition attempts to downplay the Court’s rejection in Parus
`
`Holdings of Touchstream’s argument regarding prosecution activity and it ignores that the Court
`
`also specified that knowledge of the patents requires more than an asserted patent being identified
`
`in a defendant’s patent, but rather “some kind of formal notice. And it might not have to be the old-
`
`fashioned send a letter, notice, or anything like that, but there actually needs to be some notice of an
`
`5
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`

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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 10 of 16
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`
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`awareness of the patent for the period to begin running.” Parus Holdings, Inc. v. Apple Inc., No.
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`6:19-cv-00432-ADA, Dkt. 107, at *5 (Mot. Ex. B) (emphasis added). Accordingly, like in Parus
`
`Holdings and the other cases Google cited, Touchstream’s allegations regarding Google’s
`
`prosecution activity should be rejected.
`
`Touchstream’s cases do not counsel otherwise. In particular, Parity Networks is inapposite,
`
`as the plaintiff’s allegations regarding knowledge of the patents were not based on the defendant’s
`
`prosecution history. See Dkt. 18 at 7. Rather, the plaintiff contended “that it sent letters . . . to
`
`Defendant, which Plaintiff argues provided Defendant with notice of the Patents-in-Suit and
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`therefore provided either actual or constructive knowledge. Defendant’s counsel responded . . . that
`
`they would investigate and would provide a complete response ‘in due course.’” Parity Networks,
`
`LLC v. Cisco Sys., Inc., No. 6:19-CV-00207-ADA, 2019 WL 3940952, at *3 (W.D. Tex. July 26,
`
`2019). The Court accordingly found that the plaintiff sufficiently alleged knowledge “prior to the
`
`filing of the complaint, at least as early as the receipt of these letters.” Id. There are no such
`
`allegations here. In addition, as discussed above, Global Sessions, also cited by Touchstream (Dkt.
`
`18 at 7), is a 2013 case that applied an outdated pleading standard.3 See supra n.1.
`
`
`3 Touchstream’s description regarding WCM Industries, Inc. v. IPS Corp. is equally unavailing. 721
`F. App’x 959, 970 n.4 (Fed. Cir. 2018). The relevant issue is not that the patent applications are
`secret, it is that the cited patent publication is not representative of the issued patent because what
`the “scope of claims in patents that do issue will be is something totally unforeseeable.” See State
`Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985); see also Meetrix IP, LLC v.
`Cisco Systems, Inc., No. 1-18-CV-309-LY, 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). Moreover, Touchstream’s cases only cite WCM Indus. for the principle that the
`“willfulness determination ‘looks to the totality of the circumstances presented in the case,’” and are
`also readily distinguishable. See SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd.,
`396 F. Supp. 3d 323, 334 (S.D.N.Y. 2019) (finding evidence for pre-suit knowledge sufficient
`including that defendant may have learned of the asserted patent’s application, that defendant’s
`“internal architecture documents bear[ed] notable similarities to both the [asserted patent] and to
`[plaintiff’s] internal architecture documents,” and that “[an employee] was hired from [plaintiff] by
`[defendant] in 2013, and . . . took several confidential” files); SiOnyx, LLC v. Hamamatsu Photonics
`
`6
`
`

`

`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 11 of 16
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`
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`Accordingly, Touchstream’s allegations that Google knew of the patents based on Google’s
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`patent prosecution should be rejected based on the same rationale discussed by the Court in Parus
`
`Holdings.
`
`3.
`
`Touchstream’s Allegations Taken Together Are Based on Failed
`Premises and Similarly Are Deficient
`
`Third, while Touchstream now contends that the above bases for pre-suit knowledge of the
`
`patents “taken together” are sufficient to avoid dismissal, Touchstream ignores that its Complaint
`
`never attempts to link its allegations regarding the purported “publicity” of the asserted patents and
`
`Google’s prosecution activity. Rather, in its Complaint, Touchstream claims that Google knew of
`
`the patents upon issuance and, its attorney argument in the opposition notwithstanding, its Complaint
`
`does not explain how these allegations are connected. Even if the Complaint did contain such
`
`allegations, it would still be deficient.
`
`Indeed, Touchstream cites no authority suggesting that sporadic citations in a defendants’
`
`prosecution activity identifying the Asserted Patents (or the patent applications that led to the
`
`patents) is made more effective by a general allegation that the plaintiff issued press releases
`
`regarding its first issued patent. For example, as discussed above, in Radware, a case cited in
`
`Touchstream’s opposition (Dkt. 18 at 4), the defendant, unlike here, was alleged to have “regularly
`
`reviewed competitors’ intellectual property related press releases along with Radware’s technology
`
`and documents.” See 2014 WL 61047, at *4. This is far afield from the generalized allegations
`
`regarding press releases in the Complaint here. Moreover, neither Radware nor SoftView, No. 10-
`
`
`K.K., 330 F. Supp. 3d 574, 610 (D. Mass. 2018) (finding that “HPK had a confidential business
`relationship with SiOnyx; it was studying the work coming out of Mazur’s laboratory to try to
`replicate the reported NIR photosensitivies; it reached out to SiOnyx in 2009 because it was
`concerned about Harvard’s patents and represented that it did not think its products infringed any of
`those patents, suggesting that it was paying attention to plaintiffs’ patent activity at least as of that
`time; and it cited to some of Harvard’s patents in the process of obtaining its own”).
`
`7
`
`

`

`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 12 of 16
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`
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`389-LPS, 2012 WL 3061027, at *6 (D. Del. July 26, 2012) address whether the defendant had pre-
`
`suit knowledge of infringement of the patent, as required.
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`Thus, Touchstream’s claims for pre-suit willful infringement are unrelated and should be
`
`taken separately, and even if taken together, fail to sufficiently plead pre-suit knowledge of the
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`Asserted Patents.
`
`C.
`
`Touchstream’s Pre- and Post-Suit Willful Infringement Claims Should Be
`Dismissed in Their Entirety
`
`While Google acknowledged in its opening brief that there is a split in authority on whether
`
`post-suit knowledge is sufficient for willful infringement, Touchstream ignores the Court’s prior
`
`precedent stating that pre-suit knowledge is required to avoid dismissal. See, e.g., Parus Holdings
`
`Inc. v. Apple Inc., No. 6:19-cv-00432-ADA, Dkt. 107, at **35-37, 46-48, 51-52 (W.D. Tex. Feb. 19,
`
`2020) (Mot. Ex. B) (dismissing pre- and post-suit willful infringement claims); see also Parity
`
`Networks, 2019 WL 3940952, at *3 (“to state a claim for willful infringement, a plaintiff must allege
`
`facts plausibly showing that as of the time of the claim’s filing . . .”) (emphasis added). While
`
`Touchstream lists several district court cases finding post-suit knowledge sufficient, Touchstream
`
`never explains why this case is different from controlling precedent in Mentor Graphics Corp. v.
`
`EVE-USA Inc., 851 F.3d 1275 (Fed. Cir. 2017), cert. dismissed, 139 S. Ct. 44 (2018). Touchstream
`
`does not even mention this Federal Circuit precedent or any of the other cases cited by Google
`
`because it cannot distinguish the legal conclusion: “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.” Id. at 1295 (citation omitted); see also VLSI Tech. LLC v. Intel Corp.,
`
`No. 18-966-CFC, 2019 WL 1349468, at *2 (D. Del. Mar. 26, 2019) (“[T[he complaint itself cannot
`
`serve as the basis for a defendant’s actionable knowledge,” because “[t]he purpose of a complaint is
`
`not to create a claim but rather to obtain relief for an existing claim.”).
`
`8
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`

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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 13 of 16
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`
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`Thus, because it cannot plead pre-suit knowledge as discussed above and post-suit
`
`knowledge is legally insufficient, Touchstream’s willful infringement claims must be dismissed.
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`D.
`
`Touchstream Fails to Adequately Plead a Claim for Injunctive Relief
`
`Touchstream asserts that it deserves permanent injunctive relief based on the bare fact that it
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`was previously a practicing entity and now has a licensing business. Dkt. 18 at 13. However,
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`Touchstream ignores that it does not, and cannot, make any showing of irreparable harm and in fact,
`
`it admits that it has no competing product that would necessitate an injunction for relief that
`
`monetary damages could not compensate. While the decision as to whether an injunction should
`
`issue requires a balancing of four factors, irreparable harm is a prerequisite for injunctive relief. See
`
`Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008) (“plaintiff seeking a preliminary
`
`injunction must establish . . . that he is likely to suffer irreparable harm”). For that reason, a party
`
`failing to plead irreparable harm cannot bring a claim for injunctive relief. M&C Innovations v.
`
`Igloo Prod. Corp., No. 4:17-CV-2372, 2018 WL 4620713, at *6 (S.D. Tex. July 31, 2018); Am.
`
`Nat’l Bank & Tr. Co. of Chi. v. Allmerica Fin. Life Ins. & Annuity Co., 2003 WL 1921815, at *4
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`(E.D. Ill. Apr. 21, 2003). While Touchstream claims that it lost customers and sales—several years
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`ago—it does not allege how any ongoing sales by Google would cause irreparable harm to
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`Touchstream’s licensing business. Dkt. 18 at 13. Touchstream otherwise fails to identify any future
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`plans or activity imperiled by the continued sale of Google Chromecast. In short, Touchstream
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`makes no effort at all to substantiate its claim of irreparable harm.
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`Touchstream also appears to suggest that it need not make any allegations with respect to
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`injunctive relief to state a claim, relying on case law stating that it is an issue to be decided after a
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`trial on the merits. Id. However, Touchstream ignores that one of its own cases states that it is
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`indeed in the Court’s discretion to dismiss such a claim “when a complaint does not contain factual
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`allegations that ‘raise[ ] any indication that . . . a permanent injunction might eventually be
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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 14 of 16
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`appropriate.’” Oxygenator Water Techs., Inc. v. Tennant Co., No. 20-cv-358 (ECT/HB), 2020 WL
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`4572062, at *6 (D. Minn. Aug. 7, 2020) (quoting M&C Innovations, 2018 WL 4620713, at *6).
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`Oxygenator Water Techs. is further distinguishable from this case because, in that case, the plaintiff
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`contended “an ongoing royalty, would irreparably harm [plaintiff] by robbing it of the ability to
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`make the exclusive license agreement it desires.” Id. at *5. There are no similar allegations of
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`irreparable harm in the Complaint here.4
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`Thus, Touchstream cannot request injunctive relief when the factual support for its request
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`is utterly lacking. Touchstream’s request for injunctive relief should be dismissed.
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`III. CONCLUSION
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`Touchstream’s Complaint fails to state a plausible claim for willful patent infringement and
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`injunctive relief, and, therefore, Google respectfully requests that the Court dismiss such claims.
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`4 In a footnote, Touchstream claims that it need not allege that it develops a “competing product[]”
`to avoid dismissal of its injunction claim, citing two cases purportedly rejecting the notion that a
`non-practicing entity cannot obtain an injunction. See Dkt. 18 at 13-14 n.5. However, unlike the
`two cases it cites, Touchstream ignores that it made no showing of irreparable harm, whether or not
`it currently develops or sells a competing product. See Software Research, Inc. v. Dynatrace LLC,
`316 F. Supp. 3d 1112, 1137 (N.D. Cal. 2018) (finding that “Dynatrace cite[d] no allegations or
`evidence establishing that SRI [wa]s a non-practicing entity” and SRI had alleged “that it exploit[ed]
`the patents-in-suit ‘by making, marketing, selling, and using products covered by the’ patents-in-
`suit, ‘including its popular eValid™ software products’”); Commonwealth Sci. & Indus. Research
`Org. v. Buffalo Tech. Inc., 492 F. Supp. 2d 600, 604 (E.D. Tex. 2007) (finding that the irreparable
`harm factor favored a permanent injunction because the plaintiff was not a non-practicing entity and
`had provided specific examples of the irreparable harm that it would suffer from the alleged
`infringement).
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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 15 of 16
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`Dated: September 3, 2021
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`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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`Case 6:21-cv-00569-ADA Document 19 Filed 09/03/21 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`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 Local Rule CV-5(b) on September 3, 2021.
`
`/s/ Michael E. Jones
`Michael E. Jones
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