Case 6:21-cv-00984-ADA Document 9 Filed 12/03/21 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`JAWBONE INNOVATIONS, LLC,
`Plaintiff(s),
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`v.
`APPLE INC.,
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`Defendant(s).
`
`Case No. 6:21-CV-00984-ADA
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`PATENT CASE
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`JURY TRIAL DEMANDED
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`DEFENDANT’S MOTION TO DISMISS
`PURSUANT TO FED. R. CIV. P. 12(b)(6)
`FOR FAILURE TO STATE A CLAIM
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`

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`Case 6:21-cv-00984-ADA Document 9 Filed 12/03/21 Page 2 of 13
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`TABLE OF CONTENTS
`I. BACKGROUND ..................................................................................................................... 1
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`II. LEGAL STANDARDS ........................................................................................................... 2
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`A. Failure to State a Claim Under Rule 12(b)(6) ................................................................... 2
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`B. Induced Infringement ........................................................................................................ 3
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`C. Willful Infringement .......................................................................................................... 4
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`III. ARGUMENT........................................................................................................................... 4
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`A. Jawbone Innovations’s Complaint Fails to State a Claim for Induced Infringement ....... 4
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`B. Jawbone Innovations’s Complaint Fails to State a Claim for Willful Infringement ......... 5
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`IV. CONCLUSION ....................................................................................................................... 7
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`Case 6:21-cv-00984-ADA Document 9 Filed 12/03/21 Page 3 of 13
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Affinity Labs of Tex., LLC v. Toyota Motor N. Am. Inc.,
`No. 6:13-cv-365, 2014 WL 2892285 (W.D. Tex. May 12, 2014) (Smith, J.) .......................4, 5
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................3
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`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...............................................................................................................2, 3
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`Bowlby v. City of Aberdeen, Miss.,
`681 F.3d 215 (5th Cir. 2012) .....................................................................................................3
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`Cevallos v. Silva,
`541 F. App’x. 390 (5th Cir. 2013) .............................................................................................3
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`DSU Med. Corp. v. JMS Co., Ltd.,
`471 F.3d 1293 (Fed. Cir. 2006)..................................................................................................3
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`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) ...........................................................................................................4, 6
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`Kirsch Rsch. & Dev., LLC v. IKO Indus., Inc.,
`No. 6:20-CV-00317, 2021 WL 4555608 (W.D. Tex. Oct. 4, 2021) (Albright,
`J.) ........................................................................................................................................3, 4, 5
`
`Monolithic Power Sys., Inc. v. Meraki Integrated Cir. (Shenzhen) Tech., Ltd.,
`No. 6:20-CV-008876, 2021 WL 3931910 (W.D. Tex. Sept. 1, 2021) (Albright,
`J.) ................................................................................................................................................4
`
`Nobelbiz, Inc. v. Insidesales.com, Inc.,
`No. 6:13-cv-360, 2014 WL 12378804 (E.D. Tex. Oct. 14, 2014) .............................................4
`
`Smith v. Houston Indep. School Dist.,
`229 F. Supp. 3d 571 (S.D. Tex. 2017) .......................................................................................3
`
`Touchscreen Gestures, LLC v. Res.in Motion Ltd.,
`No. 6:12CV263, 2013 WL 8505349 (E.D. Tex. Mar. 27, 2013) ...............................................6
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016)..................................................................................................6
`
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`Other Authorities
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`Fed. R. Civ. P. 12 .............................................................................................................................2
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`iv
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`Case 6:21-cv-00984-ADA Document 9 Filed 12/03/21 Page 5 of 13
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`Plaintiff Jawbone Innovations, LLC’s (“Jawbone Innovations Innovations”) allegations of
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`indirect and willful infringement are missing necessary elements and Apple Inc. (“Apple”)
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`respectfully moves this Court to dismiss with prejudice Jawbone Innovations’s indirect and willful
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`infringement claims of the asserted patents.1
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`Jawbone Innovations fails to state a claim for indirect and willful infringement claims
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`because Jawbone Innovations does not allege any facts showing that Apple knew of the asserted
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`patents, much less that Apple had the specific intent to induce infringement. Instead, Jawbone
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`Innovations speculates that Apple was among “a host of technology companies” that were
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`“identified as potential buyers of Jawbone’s US Patents.” (Complaint, ¶21). Jawbone
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`Innovations’s willful infringement allegations suffer from another shortcoming: they fail to allege
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`facts that support an inference that Apple knew or should have known that its acts infringed the
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`patent. Jawbone Innovations’s mere recitation of the element that Apple knew or took deliberate
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`steps to avoid learning that those acts infringe cannot suffice because this recitation amounts to a
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`legal conclusion insufficient to establish willful infringement as plausible. Consequently, Jawbone
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`Innovations’s claims of indirect and willful infringement should be dismissed.
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`I.
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`BACKGROUND
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`Jawbone Innovations filed its Complaint against Apple on September 23, 2021. Jawbone
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`Innovations alleges that each of Apple’s iPhone, iPad, AirPods Pro, and HomePod products
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`infringes one or more claims of eight asserted patents that Jawbone Innovations acquired from
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`Jawbone Inc.—an entity that appears to have no relationship to Plaintiff—after Jawbone Inc. was
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`liquidated in 2017. (Complaint, ¶ 20.) The asserted patents are generally directed to noise
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`suppression and/or voice detection technology. (Id., ¶¶ 22-36.) Jawbone Innovations alleges Apple
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`1 The asserted patents are U.S. Patent Nos. 8,019,091; 7,246,058; 8,280,072; 8,321,213;
`8,326,611; 10,779,080; 11,122,357; 8,467,543.
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`1
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`willfully infringed the patents, and it also alleges Apple indirectly infringed the patents by
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`“inducing others, including Apple’s customers and end-users of the Accused Products, to directly
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`infringe.” (See, e.g., id., ¶ 66.) Jawbone Innovations’s indirect infringement allegations are limited
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`to induced infringement, as it does not allege indirect infringement in any other form.
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`Jawbone Innovations alleges that “(f)ollowing Jawbone, Inc.’s liquidation a host of
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`technology companies including Apple, Samsung, Google, LG, and Fitbit [were] identified as
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`potential buyers of Jawbone’s US Patents” by a patent research firm, Envision IP. (Id., ¶ 21.) The
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`online article to which Jawbone Innovations cites says nothing about whether the potential buyers
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`were ever actually contacted. (Id.) Jawbone Innovations cites no other facts in support of its
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`allegations that Apple knew about the patents, much less had the specific intent to induce patent
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`infringement. Instead, it merely alleges, on information and belief, that “Envision IP (and other
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`parties) contacted Apple regarding the value of the Patents-in-Suit.” (Id.) Jawbone Innovations
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`does not allege when or how Envision IP made this alleged contact, or what other parties contacted
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`Apple, or when or how they did so. And Jawbone Innovations pleads no facts at all to support its
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`allegation that Apple knew or should have known that its conduct amounted to willful infringement
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`of the asserted patents. Jawbone Innovations’s indirect and willful infringement claims2 fail to
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`meet the pleading requirements and should be dismissed.
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`II.
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`LEGAL STANDARDS
`A.
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`Failure to State a Claim Under Rule 12(b)(6)
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`A complaint must “give … fair notice of what the … claim is and the grounds upon which
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`it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 1964 (2007). Dismissal for failure to state
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`a claim under Rule 12(b)(6) is proper if the complaint fails to allege “enough facts to state a claim
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`2 See, e.g., ¶¶ 48-51 (pleading allegations of induced and willful infringement as to the ’091
`patent).
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`2
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`to relief that is plausible on its face” and “nudge[] [the] claims across the line from conceivable to
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`plausible.” Twombly, 550 U.S. at 570; Ashcroft v. Iqbal, 556 U.S. 662, 678, (2009). “A claim has
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`facial plausibility when the plaintiff pleads factual content that allows the court to draw the
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`reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at
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`678 (citing Twombly, 550 U.S. at 556, 127 S. Ct. at 1955).
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`While all well-pleaded factual allegations should be accepted as true and construed in the
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`light most favorable to the nonmovant, Bowlby v. City of Aberdeen, Miss., 681 F.3d 215, 219
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`(5th Cir. 2012), they must still be sufficient to “raise a right to relief above the speculative
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`level.” Cevallos v. Silva, 541 F. App’x. 390, 392 (5th Cir. 2013) (citing Twombly, 550 U.S. at
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`555) (emphasis added). A court is “not bound to accept as true a legal conclusion couched as a
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`factual allegation” and “[t]hreadbare recitals of the elements of a cause of action, supported by
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`mere conclusory statements, will not suffice.” Iqbal, 556 U.S. at 678-79; Twombly, 550 U.S. at
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`555. A claim is properly dismissed if its allegations only allow the court to infer “the mere
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`possibility of misconduct.” Cevallos, 541 F. App’x. at 392 (citing Iqbal, 556 U.S. at 679).
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`Further, leave to amend to cure pleading defects should be denied if the claim is futile, legally
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`insufficient on its face, or frivolous. Smith v. Houston Indep. School Dist., 229 F. Supp. 3d 571,
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`576 (S.D. Tex. 2017).
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`B.
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`Induced Infringement
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`To plead induced infringement, a plaintiff must allege facts showing that the accused
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`infringer: (1) had actual knowledge of the patent or was willfully blind to the existence of the
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`patent; (2) knowingly induced a third-party to infringe the patent; and (3) had specific intent to
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`induce the patent infringement. DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1305-06 (Fed.
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`Cir. 2006); Kirsch Rsch. & Dev., LLC v. IKO Indus., Inc., No. 6:20-CV-00317, 2021 WL 4555608,
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`at *1 (W.D. Tex. Oct. 4, 2021) (Albright, J.). Allegations that merely repeat the language of §
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`271(b) without adding factual allegations, or that are merely conclusory and speculative, are
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`properly dismissed. See e.g., Nobelbiz, Inc. v. Insidesales.com, Inc., No. 6:13-cv-360, 2014 WL
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`12378804, at *4 (E.D. Tex. Oct. 14, 2014); Affinity Labs of Tex., LLC v. Toyota Motor N. Am. Inc.,
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`No. 6:13-cv-365, 2014 WL 2892285, at *4-8 (W.D. Tex. May 12, 2014) (Smith, J.).
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`C. Willful Infringement
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`A finding of willful infringement is reserved only for the most culpable conduct,
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`committed by “pirates” who flagrantly steal a patentee’s intellectual property. Halo Elecs., Inc. v.
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`Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016). To state a claim for willful infringement, a
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`plaintiff must plead facts plausibly showing that the accused infringer “(1) knew of the patent-in-
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`suit; (2) after acquiring that knowledge, it infringed the patent; and (3) in doing so, it knew, or
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`should have known, that its conduct amounted to infringement of the patent.” Monolithic Power
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`Sys., Inc. v. Meraki Integrated Cir. (Shenzhen) Tech., Ltd., No. 6:20-CV-008876, 2021 WL
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`3931910, at *5 (W.D. Tex. Sept. 1, 2021) (Albright, J.) (quoting Valinge Innovation AB v.
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`Halstead New England Corp., No. CV 16-1082, 2018 WL 2411218, at *13 (D. Del. May 29,
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`2018)).
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`III. ARGUMENT
`A.
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`Jawbone Innovations’s Complaint Fails to State a Claim for Induced
`Infringement
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`Jawbone Innovations’s indirect infringement allegations, which are limited to induced
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`infringement, fail to rise to the level necessary to state a claim. This Court has reasoned that a
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`plaintiff relying on a purported contact with the accused infringer as a basis for alleging the accused
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`infringer knew about the patent must allege concrete facts about the “nature, content and depth”
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`of the contact to elevate the allegations to the required level of plausibility. Kirsch, 2021 WL
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`4555608 at *2. Here, Jawbone Innovations does not rely on any purported contact. Jawbone
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`Case 6:21-cv-00984-ADA Document 9 Filed 12/03/21 Page 9 of 13
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`Innovations does not allege that Envision IP actually contacted Apple; it merely speculates that
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`Envision IP may have contacted Apple regarding the value of the patents-in-suit because Apple
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`was among “a host of technology companies” that were allegedly “identified as potential buyers
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`of Jawbone’s US Patents.” (Complaint, ¶ 21.) Such an allegation is insufficient to establish that
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`Apple plausibly knew of the asserted patents and intended to induce others to infringe them.
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`Jawbone Innovations offers no facts about the “nature, content and depth” of the purported
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`contact because Jawbone Innovations has no basis to allege the contact ever occurred. Jawbone
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`Innovations’s recitation of the legal element of willful blindness, unsupported by factual
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`allegations, cannot cure Jawbone Innovations’s deficient allegations on knowledge. Additionally,
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`Jawbone Innovations alleges no facts supporting even an inference that Apple had the specific
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`intent to induce others to infringe the asserted claims. For example, Jawbone Innovations alleges
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`that Apple’s “instruction manuals, websites, promotional materials, advertisements, and other
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`information demonstrate to others, including customers, prospective customers, and distributors,
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`how to use the Accused Products in an infringing manner.” (Complaint, ¶ 49.) But this allegation
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`falls far short of the pleading requirements because it does not even suggest whether Apple had
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`the specific intent to induce infringement. See Affinity Labs of Texas, LLC, 2014 WL 2892285, at
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`*7 (finding plaintiff’s “generalized allegations that Toyota induced others to infringe the Asserted
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`Patents through its marketing and sales tactics [were] likewise insufficient”). Because Jawbone
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`Innovations has failed to meet the pleading requirements for knowledge and specific intent,
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`Jawbone Innovations’s induced infringement claims should be dismissed.
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`B.
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`Jawbone Innovations’s Complaint Fails to State a Claim for Willful
`Infringement
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`Jawbone Innovations’s failure to adequately plead facts to support an inference that Apple
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`knew about the asserted patents is also fatal to its willful infringement claims. Kirsch, 2021 WL
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`5
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`4555608, at *2 (granting motion to dismiss inducement and willful infringement claims where
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`plaintiff did not plead fact to support knowledge allegation); see also WBIP, LLC v. Kohler Co.,
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`829 F.3d 1317, 1341 (Fed. Cir. 2016) (prerequisite for enhanced damages is knowledge of the
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`patent); M & C Innovations, 2018 WL 4620713, at *2-4 (pre-suit willfulness claim requires
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`knowledge of the patent); Touchscreen Gestures, LLC v. Res.in Motion Ltd., No. 6:12CV263, 2013
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`WL 8505349, at *2-3 (E.D. Tex. Mar. 27, 2013) (willfulness claim in original complaint must be
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`grounded exclusively in defendant’s pre-suit conduct and requires knowledge of the patent).
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`Without alleging facts sufficient to at least plausibly infer that Apple had knowledge of the asserted
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`patents, Jawbone Innovations’s willful infringement claim must fail.
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`Further, Jawbone Innovations’s claims for willful infringement cannot survive a motion to
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`dismiss because Jawbone Innovations did not allege facts showing Apple knew or should have
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`known that its conduct amounted to infringement of the patent or any other facts supporting
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`“egregious” conduct on the part of Apple. As the Supreme Court had made plain, “[a]wards of
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`enhanced damages under the Patent Act over the past 180 years establish that they are not to be
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`meted out in a typical infringement case, but are instead designed as a ‘punitive’ or ‘vindictive’
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`sanction for egregious infringement behavior.” Halo, 136 S. Ct. at 1932 (emphasis added).
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`Jawbone Innovations’s entire willfulness allegation is exemplified in the following passage from
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`its Complaint:
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`Defendant has willfully infringed, and continues to willfully infringe, the ’091
`Patent by intentionally and deliberately carrying out acts of direct and indirect
`infringement, while knowing, or taking deliberate steps to avoid learning, that those
`acts infringe. For example, upon information and belief, Defendant has known of
`Jawbone Innovations’s patents, including the ’091 Patent, at least since they were
`marketed to Defendant following Jawbone Innovations Inc.’s liquidation.
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`(Complaint, ¶ 51.) Jawbone Innovations repeats the same allegations with respect to all of the
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`asserted patents. These allegations, however, say nothing of any “egregious” conduct. At most, the
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`allegations—other than the recited legal conclusion of willful blindness—suggest Apple marketed
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`its products after the liquidation of Jawbone Innovations Inc., which is perfectly ordinary conduct
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`for a business selling its products. Even when presumed true, such facts do not rise to the level of
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`“willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—
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`characteristic of a pirate” that the Supreme Court has suggested is necessary to allow for a finding
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`of willfulness and an enhancement of damages. Accordingly, Jawbone Innovations’s willful
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`infringement allegations should be dismissed.
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`IV. CONCLUSION
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`Apple respectfully requests that the claims for induced infringement and willful
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`infringement be dismissed with prejudice.
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`Case 6:21-cv-00984-ADA Document 9 Filed 12/03/21 Page 12 of 13
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`Dated: December 3, 2021
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`FISH & RICHARDSON P.C.
`
`By: /s/ Ricardo J. Bonilla
`J. Stephen Ravel
`Texas State Bar No. 16584975
`KELLY HART & HALLMAN LLP
`303 Colorado, Suite 2000
`Austin, Texas 78701
`Tel: (512) 495-6429
`Email: steve.ravel@kellyhart.com
`
`Ricardo J. Bonilla
`Texas Bar No. 24082704
`rbonilla@fr.com
`FISH & RICHARDSON P.C.
`1717 Main Street, Suite 5000
`Dallas, TX 75201
`(214) 747-5070 – Telephone
`(214) 747-2091 – Facsimile
`
`Benjamin C. Elacqua
`Texas Bar No. 24055443
`elacqua@fr.com
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, Texas 77010
`(713) 654-5300 – Telephone
`(713) 652-0109 – Facsimile
`
`Betty H. Chen
`Texas Bar No. 24056720
`bchen@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello St., Suite 500
`Redwood City, CA 94063
`(650) 839-5067 – Telephone
`(650) 839-5071 - Facsimile
`
`COUNSEL FOR DEFENDANT
`APPLE INC.
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`Case 6:21-cv-00984-ADA Document 9 Filed 12/03/21 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on December 3, 2021, to all counsel of record who are deemed to
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`have consented to electronic service via the Court’s CM/ECF system.
`
`/s/ Ricardo J. Bonilla
`Ricardo J. Bonilla
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