IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`§
`
`§
`Case No. 6:21-cv-00984-ADA
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`§
`
`
`
`
`v.
`
`
`APPLE INC.,
`
`
`Defendant.
`
`
`
`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 1 of 19
`
`
`JAWBONE INNOVATIONS, LLC,
`
`
`Plaintiff,
`
`
`
`PLAINTIFF’S RESPONSE IN OPPOSITION TO DEFENDANT’S
`RENEWED MOTION TO DISMISS FIRST AMENDED COMPLAINT PURSUANT
`TO FED. R. CIV. P. 12(b)(6) FOR FAILURE TO STATE A CLAIM (DKT. 24)
`
`
`
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 2 of 19
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 2
`
`LEGAL STANDARD ......................................................................................................... 3
`
`ARGUMENT ...................................................................................................................... 5
`
`A.
`
`Jawbone Sufficiently Pleaded Knowledge of the Patents-in-Suit........................... 5
`
`1.
`
`2.
`
`3.
`
`Jawbone Sufficiently Pleaded Indirect and Willful Infringement
`Based on the Original Complaint ................................................................ 5
`
`Jawbone Sufficiently Pleaded Knowledge of the Patents Based on
`Envision IP’s Contact with Apple............................................................... 5
`
`Jawbone Sufficiently Pleaded Knowledge Based on Apple’s
`Disclosure of the ’091 Patent to the Patent Office ...................................... 6
`
`Jawbone Sufficiently Pleaded Willful Blindness .................................................... 8
`
`Jawbone Sufficiently Pleaded Inducement ............................................................. 9
`
`Jawbone Sufficiently Pleaded Willful Infringement............................................. 10
`
`1.
`
`2.
`
`Jawbone Sufficiently Pleaded Knowledge of the Patents ......................... 10
`
`Jawbone Sufficiently Pleaded Knowledge of Infringement ..................... 11
`
`B.
`
`C.
`
`D.
`
`E.
`
`If the Court Dismisses It Should Do So Without Prejudice.................................. 12
`
`V.
`
`CONCLUSION ................................................................................................................. 13
`
`
`
`
`i
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 3 of 19
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`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) .......................................10
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................3
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................3
`
`Callwave Commc’ns LLC v. AT&T Mobility LLC,
`No. 12-1701-RGA, 2014 WL 5363741 (D. Del. Jan. 28, 2014) ..............................................11
`
`Collins v. Morgan Stanley Dean Witter,
`224 F.3d 496 (5th Cir. 2000) .....................................................................................................3
`
`Core Optical Techns., LLC v. Nokia Corp.,
`No. SA CV19-02190 JAK, 2020 WL 6126285 (C.D. Cal. Oct. 8, 2020)..................................7
`
`Corephotonics, Ltd. v. Apple, Inc.,
`No. 17-CV-6457-LHK, 2018 WL 4772340 (N.D. Cal. Oct. 1, 2018) .......................................6
`
`Denstply Sirona, Inc. v. Edge Endo, LLC,
`No. 17-1041, 2019 WL 1517584 (D.N.M. Apr. 8, 2019) ..........................................................8
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)..................................................................................................9
`
`Frac Shack Inc. v. AFD Petroleum (Texas) Inc.,
`No. 7:19-cv-26-DC, 2019 WL 3818048 (W.D. Tex. Jun. 13, 2019) .........................................5
`
`Glob.-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) ...................................................................................................................4
`
`Halo Electronics, Inc. v. Pulse Electronics, Inc.,
`579 U.S. 93 (2016) .................................................................................................................4, 8
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`234 F. Supp. 3d 601 (D. Del. 2017) .........................................................................................11
`
`Kaneka Corp. v. SKC Kolon PI, Inc.,
`198 F. Supp. 3d 1089 (C.D. Cal. 2016) .....................................................................................8
`
`ii
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 4 of 19
`
`Kewazinga Corp. v. Microsoft Corp.,
`No. 1:18-cv-4500-GHW, 2021 WL 4066596 (S.D.N.Y. 2021) ................................................8
`
`Kirsch Research. & Dev., LLC v. IKO Indus., Inc.,
`No. 6:20-cv-00317-ADA, 2021 WL 4555608 (W.D. Tex. Oct. 4, 2021) ............................6, 12
`
`Longhorn Vaccines & Diagnostics, LLC v. Spectrum Sols. LLC,
`No. 2:20-cv-00827-DBB-JCB, 2021 WL 4324508 (D. Utah Sept. 23, 2021) .................6, 7, 11
`
`McZeal v. Sprint Nextel Corp.,
`501 F.3d 1354 (Fed. Cir. 2007)..................................................................................................4
`
`Monolithic Power Sys., Inc. v. Meraki Integrated Circuit (Shenzhen) Tech., Ltd.,
`No. 6:20-CV-008876-ADA, 2021 WL 3931910
` (W.D. Tex. Sep. 1, 2021) ........................................................................................................12
`
`Motiva Patents, LLC v. Sony Corp.,
`408 F. Supp. 3d 819 (E.D. Tex. 2019) .......................................................................................9
`
`Nalco Co. v. Chem-Mod, LLC,
`883 F.3d 1337 (Fed. Cir. 2018)..................................................................................................3
`
`Parity Networks, LLC v. Cisco Systems, Inc.,
`No. 6:19-cv-00207-ADA, 2019 WL 3940952 (W.D. Tex. Jul. 26, 2019) .........................2, 4, 6
`
`Princeton Dig. Image Corp. v. Ubisoft Entm’t SA,
`No. 13-355-LPS-CJB, 2017 WL 6337188 (D. Del. Dec. 12, 2017) ..........................................7
`
`Red Rock Analytics, LLC v. Apple Inc.,
`No. 6:21-CV-00346-ADA, 2021 WL 5828368 (W.D. Tex. Dec. 8, 2021) ...........................3, 4
`
`SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd.,
`396 F. Supp. 3d 323 (S.D.N.Y. 2019)........................................................................................8
`
`Simplivity Corp. v. Springpath, Inc.,
`No. CV 4:15-13345-TSH, 2016 WL 5388951 (D. Mass. July 15, 2016) ..................................4
`
`SynQor, Inc. v. Artesyn Techs., Inc.,
`No. 07-Civ.-497-TJW-CE, 2011 WL 3624957 (E.D. Tex. Aug. 17, 2011),
`aff’d, 709 F.3d 1365 (Fed. Cir. 2013) ........................................................................................4
`
`Tinnus Enters., LLC v. Telebrands Corp.,
`846 F.3d 1190 (Fed. Cir. 2017)..................................................................................................9
`
`Ultravision Techs., LLC v. Govision LLC,
`No. 2:18-cv-00100-JRG-RSP, 2020 WL 1542371 (E.D. Tex. Mar. 10, 2020) .........................9
`
`iii
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 5 of 19
`
`Vasudevan Software, Inc. v. TIBCO Software Inc.,
`No. C 11-06638 RS, 2012 WL 1831543 (N.D. Cal. May 18, 2012) .........................................8
`
`Other Authorities
`
`Fed. R. Civ. P. 12(b)(6)................................................................................................................3, 5
`
`
`iv
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 6 of 19
`
`Plaintiff Jawbone Innovations, LLC (“Jawbone” or “Plaintiff”), by and through its
`
`undersigned counsel, hereby submits this response in opposition to Defendant Apple Inc.’s
`
`(“Apple” or “Defendant”) Motion to Dismiss (Dkt. 24, the “Motion”).
`
`I.
`
`INTRODUCTION
`
`Apple seeks to dismiss, with prejudice, Jawbone’s claims of indirect and willful
`
`infringement. (Motion at 2-3.) The Court should deny Apple’s Motion. At the outset, Apple does
`
`not provide any reason or argument that the Court should dismiss any part of the Amended
`
`Complaint (Dkt. 19, “Am. Compl.”) with prejudice. Indeed, even when granting motions to
`
`dismiss, this Court’s established practice is to allow plaintiffs to replead if later discovery uncovers
`
`the requisite facts. The facts in the Am. Compl., however, fully support Jawbone’s claims of
`
`indirect and willful infringement regarding the Asserted Patents.1
`
`First, at the very least, Apple has had notice of the ’091, ’072, ’543, ’058, ’611, ’080, and
`
`’357 Patents since the filing of the original Complaint in this case on September 23, 2021.
`
`(Amended Complaint, ¶¶30-31.) That original Complaint also provided Apple with notice of how
`
`it infringed each of those patents. (Dkt. 1, ¶¶ 37-159; Amended Complaint, ¶¶30-31.) Apple does
`
`not even discuss its knowledge and notice based on the original Complaint. Accordingly, the Court
`
`should not dismiss Jawbone’s claims of willful and indirect infringement with respect to those
`
`patents.
`
`Second, Apple does not deny that it had notice of the ’091 Patent at least since May 15,
`
`2015, when Apple filed an Information Disclosure Statement (“IDS”) with the United States Patent
`
`
`1 The “Asserted Patents” or “Patents-in-Suit” refer to U.S. Patent No. 8,019,091 (the “’091
`Patent”), U.S. Patent No. 7,246,058 (the “’058 Patent”), U.S. Patent No. 8,280,072 (the “’072
`Patent”), U.S. Patent No. 8,321,213 (the “’213 Patent”), U.S. Patent No. 8,326,611 (the “’611
`Patent”), U.S. Patent No. 10,779,080 (the “’080 Patent”), U.S. Patent No. 11,122,357 (the “’357
`Patent”), U.S. Patent No. 8,467,543 (the “’543 Patent”), and U.S. Patent No. 8,503,691 (the “’691
`Patent”).
`
`
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 7 of 19
`
`and Trademark Office during prosecution of one of Apple’s own patents. (Am. Compl., ¶¶ 23-24.)
`
`Accordingly, the Court should deny Apple’s motion with respect to the ’091 Patent.
`
`Apple also had notice of the Patents-in-Suit when it was contacted by Envision IP in 2017
`
`regarding the potential sale of those patents. (Id., ¶ 22.) Apple’s quibbles with Jawbone’s
`
`allegations seem to be that they have not been proven. (Motion at 7-8 (“Jawbone has no basis to
`
`allege the contact allegedly occurred.”).) Jawbone is not required to prove its allegations at the
`
`pleading stage; indeed, the Court must take them as true. E.g., Parity Networks, LLC v. Cisco
`
`Systems, Inc., No. 6:19-cv-00207-ADA , 2019 WL 3940952, at *1 (W.D. Tex. Jul. 26, 2019).
`
`Finally, it is highly plausible that Apple discovered the remaining Patents-in-Suit when it
`
`became aware of the ’091 Patent in May 2015. The remaining patents have an inventor and
`
`assignee in common with the ’091 Patent. It is plausible that the same investigation that discovered
`
`the ’091 Patent discovered the remaining patents as well. It is also plausible that Apple analyzed
`
`its own infringement of the Patents-in-Suit when it first became aware of each Patent.
`
`Accordingly, the Court should deny Apple’s Motion.
`
`II.
`
`BACKGROUND
`
`The technology of the Asserted Patents was developed by Jawbone, Inc., which was
`
`originally founded in 1998 as AliphCom, Inc. (“AliphCom”). (Am. Compl. ¶ 19.) In 2004,
`
`AliphCom launched its mobile headset called the “Jawbone,” using the advanced noise-
`
`suppression technology it developed for the military. (Id., ¶ 20.) This technology virtually
`
`eliminated background noise while increasing the volume of the speakers’ voices. (Id.) A
`
`Bluetooth version of the “Jawbone” was released in 2008 and sold in the Apple Store. (Id.) Due to
`
`the popularity and success of the “Jawbone,” AliphCom changed its name to Jawbone, Inc. in
`
`2011. (Id., ¶21.) Due to a competitive marketplace, Jawbone, Inc. was forced into liquidation in
`
`2017. (Id.) The potential buyers of Jawbone, Inc.’s patents included Apple, Samsung, Google, LG,
`
`2
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 8 of 19
`
`and Fitbit .2 (Id. ¶ 22.)
`
`On September 23, 2021, Jawbone filed this action against Apple alleging infringement of
`
`the Asserted Patents. (Dkt. 1). Jawbone filed an Amended Complaint on December 23, 2021. (Dkt.
`
`19.).
`
`III. LEGAL STANDARD
`
`Pursuant to Rule 12(b)(6), a defendant may move to dismiss a complaint for “failure to
`
`state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). “To survive a motion to
`
`dismiss under Rule 12(b)(6), a complaint must contain sufficient factual matter, accepted as true,
`
`to state a claim to relief that is plausible on its face.” Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337,
`
`1347 (Fed. Cir. 2018) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)) (internal quotation
`
`marks omitted). “To meet this requirement, the plaintiff must plead ‘factual content that allows the
`
`court to draw the reasonable inference that the defendant is liable for the misconduct alleged.’” Id.
`
`(citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)). When the court rules “on a motion
`
`to dismiss under Rule 12(b)(6), [it] accepts all well-pleaded factual allegations as true and
`
`construes all reasonable inferences in favor of the plaintiff.” Id. “A motion to dismiss under Rule
`
`12(b)(6) is viewed with disfavor and is rarely granted.” Collins v. Morgan Stanley Dean Witter,
`
`224 F.3d 496, 498 (5th Cir. 2000) (citation omitted) (internal quotation marks omitted). To state a
`
`claim for patent infringement, “a patentee need only plead facts sufficient to place the alleged
`
`
`2 Apple, Google and Fitbit Touted to Acquire Jawbone Patents, WORLD INTELL. PROP. REV. (July
`14,
`2017),
`https://www.worldipreview.com/news/apple-google-and-fitbit-touted-to-acquire-
`jawbone-patents-14322. Furthermore, Google acquired Fitbit in November 2019, and the deal
`eventually closed in January 2021. Cory Stieg, Fitbit CEO and Co-Founder James Park on His
`Own Fitness Routine and Selling to Google for $2.1 Billion, CNBC (Aug. 3, 2021, 10:27 AM),
`https://www.cnbc.com/2021/08/03/fitbit-ceo-james-park-on-habits-achieving-success-and-sale-
`to-google.html.
`
`3
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 9 of 19
`
`infringer on notice as to what he must defend.” McZeal v. Sprint Nextel Corp., 501 F.3d 1354,
`
`1357 (Fed. Cir. 2007) (citing Twombly, 550 U.S. at 565 n.10).
`
`“To allege indirect infringement, the plaintiff must plead specific facts sufficient to show
`
`that the accused infringer had actual knowledge of the patents-in-suit, or was willfully blind to the
`
`existence of the patents-in-suit.” Red Rock Analytics, LLC v. Apple Inc., No. 6:21-CV-00346-
`
`ADA, 2021 WL 5828368, at *2 (W.D. Tex. Dec. 8, 2021) (citing Glob.-Tech Appliances, Inc. v.
`
`SEB S.A., 563 U.S. 754, 766, 769 (2011)). Willful blindness requires that “(1) the defendant must
`
`subjectively believe that there is a high probability that a fact exists and (2) the defendant must
`
`take deliberate actions to avoid learning of that fact.” Glob.-Tech, 563 U.S. at 769.
`
`To allege willful infringement, the plaintiff must plausibly allege the “subjective
`
`willfulness of a patent infringer, intentional or knowing.” Halo Electronics, Inc. v. Pulse
`
`Electronics, Inc., 579 U.S. 93, 105 (2016). The plaintiff must show that the accused patent
`
`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 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).
`
`“[K]nowledge of the patents may be proven by either direct or circumstantial evidence.”
`
`SynQor, Inc. v. Artesyn Techs., Inc., No. 07-Civ.-497-TJW-CE, 2011 WL 3624957, at *3 (E.D.
`
`Tex. Aug. 17, 2011), aff’d, 709 F.3d 1365 (Fed. Cir. 2013). Even if allegations in isolation are not
`
`“enough to raise . . .entitlement to relief from speculative to plausible,” allegations “[c]ollectively
`
`however, [] suffice, even if barely so, to support a reasonable inference of . . .pre-suit
`
`knowledge. . . .” Simplivity Corp. v. Springpath, Inc., No. CV 4:15-13345-TSH, 2016
`
`WL 5388951, at *10 (D. Mass. July 15, 2016).
`
`4
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 10 of 19
`
`IV. ARGUMENT
`
`A.
`
`Jawbone Sufficiently Pleaded Knowledge of the Patents-in-Suit
`
`1.
`
`Jawbone Sufficiently Pleaded Indirect and Willful Infringement
`Based on the Original Complaint
`
`Jawbone’s original Complaint was filed on September 23, 2021, and put Apple on notice
`
`of the ’091, ’072, ’543, ’058, ’611, ’080, and ’357 Patents. (Am. Compl., ¶¶ 30-31.) The Original
`
`Complaint further informed Apple of how its products infringe those patents. (Id., see also Dkt. 1,
`
`¶¶ 22-159.) Apple does not address its knowledge of the patents and its infringement based on the
`
`Original Complaint’s allegations. (See generally Motion.) Accordingly, Jawbone’s Am. Compl.
`
`properly states a claim for indirect and willful infringement. Frac Shack Inc. v. AFD Petroleum
`
`(Texas) Inc., No. 7:19-cv-26-DC, 2019 WL 3818048, at *2 (W.D. Tex. Jun. 13, 2019) (holding
`
`that allegations of knowledge based on filing of Original Complaint sufficient to support claims
`
`of indirect and willful infringement). The Court should deny Apple’s Motion based on these
`
`allegations alone.
`
`2.
`
`Jawbone Sufficiently Pleaded Knowledge of the Patents Based on
`Envision IP’s Contact with Apple
`
`Jawbone alleged that Envision IP, a patent research firm, contacted Defendant when
`
`Jawbone, Inc. entered liquidation proceedings in 2017. (Am. Compl., ¶ 22.) Jawbone alleged that
`
`Defendant was notified that its products infringed the Asserted Patents, ultimately becoming aware
`
`of the Asserted Patents and its infringing products at least as of 2017. (Id.)
`
`Apple argues that the Amended Complaint should have provided more detail regarding the
`
`contacts between Envision and Jawbone Inc., and that, in Apple’s view, the contact may not have
`
`happened. (Motion at 7-8.) Whatever doubts Apple has regarding the contact are immaterial at the
`
`motion to dismiss stage. Frac Shack Inc., 2019 WL 3818048, at *1 (“When considering a motion
`
`to dismiss under Rule 12(b)(6), a court takes as true all well-pleaded factual allegations and
`
`5
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 11 of 19
`
`construes them in the light most favorable to the plaintiff.”). Apple’s further complaint that more
`
`detail is required are unfounded. See Parity Networks, 2019 WL 3940952, at *3 (“The Court notes
`
`that this case is not at the proof stage. Instead, it is at the pleading stage; therefore, the Court must
`
`only find that Plaintiff has sufficiently alleged a viable claim.”).
`
`Apple cites only one case in support of its position. (Motion at 7 (citing Kirsch Research.
`
`& Dev., LLC v. IKO Indus., Inc., No. 6:20-cv-00317-ADA, 2021 WL 4555608, at *2 (W.D. Tex.
`
`Oct. 4, 2021)).) But Kirsch concerned vastly different facts than those alleged here. In Kirsch, the
`
`plaintiff alleged notice because “[Defendant] sought to sell [Plaintiff’s] products in Europe in
`
`2008, and therefore should have learned of the ’482 patent.” (Id. at *2.) The Court noted the paucity
`
`of these allegations, and that “[m]ore information about Mr. Vanderstappen’s contact with Kirsch,
`
`including its nature, content, and depth may have allowed the Court to find Plaintiff’s allegations
`
`of pre-expiration knowledge plausible.” Id. The Court did not hold that such details regarding
`
`nature, content, and depth were required in every case. See id. Here, the contact was directly related
`
`to the Asserted Patents, not with respect to selling products in Europe. (Am. Compl., ¶¶ 22.)
`
`Accordingly, Jawbone’s allegations plausibly state that Apple had knowledge based on the
`
`Envision contact.
`
`3.
`
`Jawbone Sufficiently Pleaded Knowledge Based on Apple’s Disclosure
`of the ’091 Patent to the Patent Office
`
`On May 15, 2015, during prosecution of U.S. Patent No. 9,313,572 (the “’572 Patent”),
`
`Apple affirmatively cited the ’091 Patent to the Patent Office. (Id., ¶ 23.) Thus, it cannot be
`
`disputed that Apple had knowledge of the ’091 Patent at that time. E.g., Corephotonics, Ltd. v.
`
`Apple, Inc., No. 17-CV-6457-LHK, 2018 WL 4772340, at *9 (N.D. Cal. Oct. 1, 2018) (“Apple’s
`
`identification of Corephotonics’ issued patent makes it more than plausible that Apple was aware
`
`of the patent.”); Longhorn Vaccines & Diagnostics, LLC v. Spectrum Sols. LLC, No. 2:20-cv-
`
`6
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 12 of 19
`
`00827-DBB-JCB, 2021 WL 4324508, at *8 (D. Utah Sept. 23, 2021) (defendant’s citation to
`
`asserted patent during prosecution of defendant’s patent plausibly supported knowledge).
`
`Apple’s cited cases do not hold otherwise. In Core Optical Techns., LLC v. Nokia Corp.,
`
`No. SA CV19-02190 JAK, 2020 WL 6126285, at *7 (C.D. Cal. Oct. 8, 2020), the court found that
`
`allegations of knowledge based on ownership of patents were insufficient where the patents were
`
`not necessarily directly owned by defendant or prosecuted by defendant’s counsel. Id. (“Its
`
`allegations do not state whose counsel prosecuted the six patents in which Plaintiff asserts the ’211
`
`Patent was cited as prior art. Nor does the allegation that Defendants ‘indirectly’ owned a patent
`
`in which the ’211 Patent was cited as prior art give rise to the necessary, plausible inference.”).
`
`See also Longhorn Vaccines & Diagnostics, 2021 WL 4324508, at *6 & n.66 (distinguishing Core
`
`Optical and noting “the courts found citations in an IDS inadequate because the plaintiff failed to
`
`adequately show how the accused infringer was connected to the IDS and related patent
`
`prosecution”). Here, Apple directly owned the ’572 Patent and its counsel prosecuted it. (Am.
`
`Compl., ¶ 23.)
`
`Apple’s other cited case, Princeton Dig. Image Corp. v. Ubisoft Entm’t SA, No. 13-355-
`
`LPS-CJB, 2017 WL 6337188 (D. Del. Dec. 12, 2017) also is based on extremely different facts.
`
`There, the complaint alleged that defendant had knowledge of the asserted patent based on citation
`
`to another, completely unrelated patent that made reference to the asserted patent. Id. at *1 (“Thus,
`
`as the Report summarizes, PDIC’s ‘allegations put two degrees of separation between Defendants
`
`and the [asserted] ’129 patent, as the theory of knowledge is not that Defendants cited directly
`
`to the ’129 patent as prior art, but rather that the Defendants cited to another patent (unrelated to
`
`the ’129 patent) that itself made reference to the ’129 patent.’”). The Princeton court thus
`
`specifically distinguished its facts from the case here, where Apple cited directly to the ’091 Patent.
`
`7
`
`

`

`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 13 of 19
`
`Based on Apple’s knowledge of the ’091 Patent, it is plausible that Apple investigated the
`
`’091 Patent and its inventor, Dr. Gregory Burnett, and discovered the other Patents-in-Suit. (Am.
`
`Compl., ¶¶ 23-28.) Each of the Asserted Patents lists Dr. Burnett as inventor. (Id., Ex. A-I.)
`
`“Evidence of pre-suit knowledge of a patent can be circumstantial.” Kaneka Corp. v. SKC Kolon
`
`PI, Inc., 198 F. Supp. 3d 1089, 1107 (C.D. Cal. 2016). Accordingly, Jawbone’s allegations
`
`sufficiently state a claim for knowledge of the other Asserted Patents. SIMO Holdings Inc. v. Hong
`
`Kong uCloudlink Network Tech. Ltd., 396 F. Supp. 3d 323, 335 (S.D.N.Y. 2019) (evidence that
`
`defendant knew of related patent supported finding of willful infringement of related patent);
`
`Kewazinga Corp. v. Microsoft Corp., No. 1:18-cv-4500-GHW, 2021 WL 4066596, at *17
`
`(S.D.N.Y. 2021) (“A reasonable jury could find that Microsoft had pre-suit knowledge of the ’234
`
`patent because it knew of the ’226 and ’325 patents, which are in the same patent family as the
`
`’234 patent, as well as other patent applications in the same family.”)
`
`Apple cites one case in support of its position. (Motion at 8 (citing Vasudevan Software,
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`Inc. v. TIBCO Software Inc., No. C 11-06638 RS, 2012 WL 1831543, at *3 (N.D. Cal. May 18,
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`2012)).) But other courts have declined to follow that case because it was decided before the
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`Supreme Court’s decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93 (2016)
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`fundamentally changed the law of willfulness. E.g., SIMO, 396 F. Supp. 3d at 335 (declining to
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`follow Vasudevan); Denstply Sirona, Inc. v. Edge Endo, LLC, No. 17-1041, 2019 WL 1517584, at
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`*4 (D.N.M. Apr. 8, 2019) (declining to follow Vasudevan).
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`Accordingly, Jawbone’s allegations based on Apple’s knowledge of the ’091 Patent
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`plausibly support a claim of indirect and willful infringement.
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`B.
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`Jawbone Sufficiently Pleaded Willful Blindness
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`As explained above, Jawbone sufficiently pleaded knowledge of the Patents-in-Suit. As
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`further set out in the Amended Complaint, to the extent Apple did not investigate its potential
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`8
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`

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`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 14 of 19
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`infringement of the Patents-in-Suit, it was willfully blind because it took the affirmative step to
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`ignore its potential infringement. (Am. Compl., ¶¶ 58, 76, 89, 104, 119, 135, 149, 166, 182.) No
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`further allegations are needed. Ultravision Techs., LLC v. Govision LLC, No. 2:18-cv-00100-JRG-
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`RSP, 2020 WL 1542371, at *1-2 (E.D. Tex. Mar. 10, 2020).
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`C.
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`Jawbone Sufficiently Pleaded Inducement
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`The Amended Complaint pleads that Apple intended for others to infringe by making,
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`using, offering to sell, selling, or importing into the United States the infringing products with the
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`knowledge of that such activities infringed. (Id., ¶¶ 58, 76, 89, 104, 119, 135, 149, 166, 182.) Apple
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`induces that infringement by providing “instruction manuals, websites, promotional materials,
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`advertisements, and other information [that] demonstrate to others, including customers,
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`prospective customers, and distributors, how to use the Accused Products in an infringing
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`manner.” (Id., ¶¶ 59, 77, 90, 105, 120, 136, 150, 167, 183.) That is more than enough to plausibly
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`state a claim for induced infringement. Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190,
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`1204 (Fed. Cir. 2017) (identifying instruction manuals as evidence of intent to induce
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`infringement); Motiva Patents, LLC v. Sony Corp., 408 F. Supp. 3d 819, 830-31 (E.D. Tex. 2019)
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`(rejecting argument that pleading indirect infringement requires “identification of specific excerpts
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`from instruction manuals identified in the Complaint; specific instructions to customers; or specific
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`content of advertisements in order to state a claim”).
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`Apple argues that more is required to plausibly allege Apple’s specific intent to indirectly
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`infringe. (Motion at 9.) But that is contrary to the law. It is well-established that “’knowledge’ and
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`‘intent’ may be averred generally” so long as the pleadings “allege sufficient underlying facts from
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`which a court may reasonably infer that a party acted with the requisite state of mind.” Exergen
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`Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009) (explaining pleading
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`requirements under Rule 9(b)’s heightened standard). As shown above, Jawbone plausibly alleged
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`9
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`

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`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 15 of 19
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`that Apple had knowledge of the patents and how its products infringe those patents. Those are
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`sufficient underlying facts to infer Apple’s intent.
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`Apple also cites Affinity Labs of Texas, LLC v. Toyota Motor N. Am., No. W:13-CV-365,
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`2014 WL 2892285 (W.D. Tex. May 12, 2014). But that case dealt with different allegations. There,
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`the plaintiff alleged that “Toyota induced its customers to purchase its vehicles, but fail[ed] to
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`allege how Toyota induced its customers to use the vehicles in a manner that would violate the
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`Asserted Patents.” Id. at *7. But “purchasing” is not an infringing act. Here, Jawbone has alleged
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`that Apple induces its customers to make, use, offer to sell, sell, or import into the United States
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`the infringing products. (Am. Compl., ¶¶ 58, 76, 89, 104, 119, 135, 149, 166, 182.) Those are all
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`infringing acts. Moreover, the Amended Complaint further alleges, based on the pages of detailed
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`infringement allegations, that “Apple is aware that the normal and customary use of the Accused
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`Products by customers, distributors, and others would infringe the Patents-in-Suit.” (Id., ¶¶ 59, 77,
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`90, 105, 120, 136, 150, 167, 183.)
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`D.
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`Jawbone Sufficiently Pleaded Willful Infringement
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`1.
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`Jawbone Sufficiently Pleaded Knowledge of the Patents
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`Apple further argues that the Court should dismiss Jawbone’s willfulness allegations.
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`(Motion at 9-11.) As discussed above, Apple does not address its knowledge and willfulness based
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`on the Original Complaint. The Court should, therefore, deny Apple’s Motion as to post-original
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`Complaint willfulness.
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`Apple first relies on its arguments that Jawbone did not sufficiently allege knowledge.
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`(Motion at 9-10.) As discussed above, Apple is wrong and Jawbone sufficiently alleged knowledge
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`of the Patents-in-Suit through Envision IP’s contacts with Apple and with Apple’s undisputed
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`knowledge of the ’091 Patent.
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`10
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`

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`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 16 of 19
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`Apple further argues that its knowledge of the ’091 Patent is not sufficient for willfulness.
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`(Motion at 10.) Apple does not cite any cases that hold to a different standard for knowledge in
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`the context of willfulness as opposed to indirect infringement. (See generally id.) Instead, Apple
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`relies on inapposite cases. For example, in Intellectual Ventures I LLC v. Symantec Corp., 234
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`F. Supp. 3d 601 (D. Del. 2017), the Court held that knowledge of the patent from citation on
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`defendant’s patents was not enough evidence of knowledge at summary judgment. Id. at 608. The
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`evidence needed to defeat a summary judgment motion is far different from that required to survive
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`a motion to dismiss. Apple’s other cited case, Callwave Commc’ns LLC v. AT&T Mobility LLC,
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`No. 12-1701-RGA, 2014 WL 5363741 (D. Del. Jan. 28, 2014), simply stated, without analysis or
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`citation to controlling law that citations in Information Disclosure Statements are “insufficient to
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`support an allegation of willfulness.” Id. at *2. Other courts have noted that Callwave’s holding is
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`an outlier and declined to follow it. Longhorn, 2021 WL 4324508, at *6 & n.68 (“Even if there
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`were a case in which the court categorically rejected citations to a patent in a defendant’s IDS as
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`grounds for inferring knowledge—and the court was unable to find such a case—that conclusion
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`would be outweighed by the case law and reasoning discussed above.”). As discussed above,
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`numerous cases have found that citations to a patent in an IDS is sufficient to support an inference
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`of knowledge for willfulness. See supra; see also Longhorn Vaccines, 2021 WL 4324508, at *6 &
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`n.63 (“Several courts have found that citations to a patent in an IDS filed by the alleged infringer
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`provide sufficient evidence of actual knowledge to survive a motion to dismiss . . . the act of citing
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`a patent in an IDS necessarily implies that the one preparing and submitting it possesses some
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`degree of knowledge regarding that patent and its contents.”).
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`2.
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`Jawbone Sufficiently Pleaded Knowledge of Infringement
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`Apple next argues that Jawbone’s pleadings of knowledge of the patent cannot support an
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`inference of knowledge of Apple’s infringement of those patents. (Motion at 11.) But Jawbone
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`11
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`Case 6:21-cv-00984-ADA Document 25 Filed 02/03/22 Page 17 of 19
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`specifically pleaded that Apple had knowledge of its infringement because Apple would have
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`either performed an analysis on becoming aware of the Patents (Am. Compl., ¶29) or, if it chose
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`not to do so, was willfully blind to its infringement (Id., ¶ 58 (“As a sophisticated technology
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`company, to the extent Defendant failed to investigate its infringement upon learning of the ’091
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`Patent, it has been willfully blind.”); see also id., ¶¶ 76, 89, 104, 119, 135, 149, 166, 182). And, of
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`course, Apple has ha