EDWARD M. CHEN, United States District Judge.
Plaintiff Software Research, Inc. ("SRI") initiated this patent infringement suit against Defendant Dynatrace LLC ("Dynatrace"), alleging that Dynatrace has directly, indirectly, and willfully infringed six of its patents — United States Patent Nos. 7,757,175 (the "'175 Patent"); 8,327,271 (the "'271 Patent"); 8,392,890 (the "'890 Patent"); 8,495,585 (the "'585 Patent"); 8,650,493 (the "'493 Patent"), and 8,984,491 (the "'491 Patent") (collectively, the "patents-in-suit"), and continue to do so through the present date. See Docket No. 31 ("FAC") ¶ 2. Dynatrace moves to dismiss the action pursuant to Federal Rule of Civil Procedure 12(b)(6), arguing that SRI has failed to "`state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)).
On January 10, 2018, SRI filed this patent infringement suit against Dynatrace, and Dynatrace subsequently filed a motion to dismiss on April 4, 2018. See Docket
The patents-in-suit claim methods and systems for testing websites, and functionalities of a test-enabled browser. The following is an introductory extract on the technology at issue:
See Docket No. 31-1 ("Exh. A") at 2; see also Docket No. 31-2 ("Exh. B") at 2.
SRI alleges that Dynatrace has violated 35 U.S.C. § 271(a) by directly infringing (i) claim 17 of the '175 Patent, (ii) claim 1 of the '271 Patent, (iii) claim 6 of the '890 Patent, (iv) claim 1 of the '585 Patent, (v) claim 1 of the '493 Patent, and (vi) claim 1 of the '491 Patent. See FAC ¶¶ 44, 66, 88, 110, 132, 154. SRI also alleges that to the extent Dynatrace do not directly infringe the above mentioned-patents, it contributes to infringement of the same under 35 U.S.C. § 271(c) inasmuch as the "Infringing Products" offered for sale and sold by Dynatrace are each a component of a patented machine or an apparatus used in practicing a patented process, constituting a material part of SRI's invention, and Dynatrace knows the same to be especially made or especially adapted for use in infringement of the patents-in-suit. See FAC ¶¶ 46, 68, 90, 112, 134, 156.
SRI further alleges that Dynatrace has actively encouraged their customers to use its products in an infringing manner, provided "detailed documentation instructing users on how to use the products in an infringing manner," and actively induced patent infringement of the patents-in-suit, in violation of 35 U.S.C. § 271(b). See FAC at ¶¶ 48-51, 70-73, 92-95, 114-117, 136-139, 158-161.
Lastly, SRI alleges that it has informed Dynatrace's predecessors-in-interest about the patents-in-suit, see FAC at ¶¶ 19, 22-25, 29-35, and Dynatrace has willfully infringed the patents-in-suit, in violation of 35 U.S.C. § 284. See FAC at ¶¶ 56, 78, 100, 122, 144, 166.
"A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted `tests the legal sufficiency of a claim.'" Conservation Force v. Salazar, 646 F.3d 1240, 1241-42 (9th Cir. 2011) (quotation omitted). The Court accepts as
Direct infringement allegations must be plausible under Iqbal, and "contain factual allegations that the accused product practices every element of at least one exemplary claim." Novitaz Inc. v. in-Market Media, LLC, 2017 WL 2311407, *3 (N.D. Cal. May 26, 2017); see also e.Digital Corp. v. iBaby Labs, Inc., No. 15-CV-05790-JST, 2016 WL 4427209, *5 (N.D. Cal. Aug. 22, 2016) (FAC failed to state a claim where plaintiff "ha[d] not attempted to map [a] limitation onto any allegations in the FAC" and "based on the Court's own independent review, it cannot discern how the FAC could be said to plausibly allege this limitation"); Atlas IP LLC v. Pac. Gas & Elec. Co., 2016 WL 1719545, *2 (N.D. Cal. Mar. 9, 2016) ("[S]imply reciting some of the elements of a representative claim and then describing generally how an accused product operates, without specifically tying the operation to any asserted claim or addressing all of the claim requirements, is insufficient."); Atlas IP, LLC v. Exelon Corp., 189 F.Supp.3d 768, 775 (N.D. Ill. 2016) ("[F]actual allegations that do not permit a court to infer that the accused product infringes each element of at least one claim are not suggestive of infringement — they are merely compatible with infringement."). "[F]ailure to meet a single limitation is sufficient to negate infringement of [a] claim." Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).
When considering a motion to dismiss, the Court "accept[s] factual allegations in the complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving party." Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). Although courts do not require "heightened fact pleading of specifics," Twombly, 550 U.S. at 570, 127 S.Ct. 1955, a plaintiff must allege "`enough fact[s] to raise a reasonable expectation that discovery will reveal' the defendant is liable for the misconduct alleged." In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1341 (Fed. Cir. 2012) (quoting Twombly, 550 U.S. at 556, 127 S.Ct. 1955). "The party moving for dismissal has the burden of proving that no claim has been stated." Lester v. Mineta, No. 04-cv-3074-SI, 2006 WL 463515, at *2 (N.D. Cal. Feb. 24, 2006).
In order to state a claim for direct infringement, a patent complaint "must identify the specific products accused." Bender v. LG Elecs. U.S.A., Inc., No. 09-cv-2114-JF-PVT, 2010 WL 889541, at *4 (N.D. Cal. Mar. 11, 2010). Dynatrace argues that SRI's boilerplate allegations fail to plausibly allege direct infringement, and makes no specific factual allegations sufficient to identify an accused product or to explain its relevant functions. See Docket No. 39 ("Mot.") at 11. The FAC identifies the infringing products as,
FAC ¶¶ 44, 66, 88, 110, 132, 154. Dynatrace argues that SRI does not provide any facts to show that the allegedly infringing product, Dynatrace Performance Management ("DPM"), is actually a product and not simply a product or service category or marketing term and Dynatrace should not have to guess about what is at issue in this case, and SRI's failure to specify an accused product is fatal to its claims. See Mot. at 11. Dynatrace argues that SRI merely refers to a category of generic functionalities, such as testing, scripting, recording and playback, without specifying an actual product, and as such, SRI's claims should be dismissed. Id.; see also FAC ¶¶ 44, 66, 88, 110, 132, 154.
Dynatrace's arguments are unpersuasive. SRI expressly defines the "Infringing Products" as a "web application monitoring and scripting tool software products" and makes specific reference to DPM. See FAC ¶ 44. SRI refers to that definition when alleging direct infringement. See FAC ¶¶ 44, 66, 88, 110, 132, 154. Dynatrace's argument that SRI must identify specific products by name in order for it to be able to respond is disingenuous. Dynatrace's own website describes DPM and its functionality. When pressed at argument, Dynatrace's counsel could not convincingly deny that DPM provided the functionality described in SRI's complaint. Nor could counsel assert and identify any specific products under DPM rubric. Rather than providing any explanation of what DPM is, Dynatrace only conclusorily asserts that DPM was merely a marketing term. Dynatrace's evasive and amorphous description of DPM underscores the point that SRI cannot be expected to identify a particular product name beyond DPM. Nor has Dynatrace made a convincing showing that it cannot defend this suit without greater specificity in the FAC. At bottom, Dynatrace appears to know what SRI is talking about when SRI identifies DPM as the infringing product. Since the Court must "accept factual allegations in the complaint as true and construe the pleadings in the light most favourable to the non-moving party," the Court finds that SRI has sufficiently identified DPM as the accused product. Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).
Cases cited by Dynatrace in support of its motion are neither dispositive nor persuasive. Cf. Big Baboon, Inc. v. SAP America, Inc., 2018 WL 1400443, *4 (N.D. Cal. Mar. 20, 2018) (dismissing direct infringement claims "in the absence of a single factual allegation identifying a specific infringing product" where plaintiff referred generally to "functionalities" incorporating the patent); see also MACOM Tech. Solutions Holdings, Inc. v. Infineon Techs., AG, 2017 WL 3449596, *5 (C.D. Cal. Jun. 5, 2017) (dismissing direct infringement claims and noting that "reliance upon MACOM's general marketing claims is insufficient to state a plausible claim for infringement.") In Big Baboon, Inc. v. SAP America, Inc., No. 17-cv-2082-HSG, 2018 WL 1400443 (N.D. Cal. Mar. 20, 2018), the plaintiff generally alleged as the basis for both claims that Defendants directly infringed and are infringing claims 15 and 20-34 of the '275 Patent by "making, using, or selling ... the inventions claimed in the '275 Patent"; the court then found that the plaintiff's allegations failed because "whenever the allegations assert infringement in the complaint, Plaintiff fail[ed] to identify an infringing product," and "whenever the allegations mention product families ... they do not state that the product families infringe." Id. at *3. The FAC in this case is clearly distinguishable from Big Baboon as Dynatrace has identified DPM as the infringing product, and unlike the FAC in Big Baboon, the allegations are not "formulaic recitation of the elements of" direct infringement. Iqbal,
In Bender, 2010 WL 889541, the plaintiff "provide[d] a list of allegedly infringing products" that comprised approximately 20 broad categories of products, but no specific model names or even names of product lines; the broad and vague categories included, for example, "Desktop PCs," "Monitors," "PDAs," and "Home Theater Systems." Id. at *2. In contrast, the FAC identifies a particular product — DPM — and provides citations to specific infringing functionality of that product. See FAC ¶ 44. Dynatrace has not demonstrated DPM merely refers to a multitude of broad categories of products.
Finally, Dynatrace suggests that the facts of this case is analogous to MACOM Tech. Sols. Holdings, Inc. v. Infineon Techs. AG, No. 16-cv-2859-CAS-PLAx, 2017 WL 3449596 (N.D. Cal. June 5, 2017) because SRI, like the counter-claimant in MACOM, relied upon Dynatrace's marketing materials to allege patent infringement, and this Court should find that "reliance upon [sic] general marketing claims is insufficient to state a plausible claim for infringement." Id. at *5. However, the court in MACOM did not find that the counter-claimant failed to identify the infringing products. Instead, the MACOM court dismissed the claims on the grounds that the counter-claimant failed to map any of the claim elements to MACOM's products. Id. at *6. Dynatrace's citation to this case is inapposite to SRI's identification of the accused product — DPM. Dynatrace fails to establish that DPM is simply marketing material and nothing more.
Apart from arguing that SRI has failed to sufficiently identify the accused product(s), Dynatrace argues that SRI's direct infringement claims are deficient because the FAC recites some claim elements and conclusory allegations that DPM "practices the method in the" patent or "consists of" the claim elements, and then cites to the same or similar "examples" from the alleged Dynatrace website without further explanation. See FAC ¶ 46. Dynatrace posits that these examples are in fact meaningless, out of context references to webpages that do not show that any particular claim limitations are plausibly met. See Atlas IP LLC v. Pac. Gas and Elec. Co., Case No. 15-cv-05469-EDL, 2016 WL 1719545, *2 (N.D. Cal. Mar. 9, 2016) (noting that "simply reciting some of the elements of a representative claim and then describing generally how an accused product operates, without specifically tying the operation to any asserted claim or addressing all of the claim requirements, is insufficient" to withstand a motion to dismiss.).
By way of example, Dynatrace brings the Court's attention to direct patent infringement allegations with regards to claim 17 of the '175 patent, arguing that SRI did not even attempt to show or explain how "DPM" meets the limitations of the asserted claim:
See Docket No. 31-1 ("Exh. A") at 17; see also Docket No. 39 at 12.
However, a comparison of the complaint and the claim limitations suggests that each claim limitation of the '175 Patent has been met by the DPM:
Claim language ('175 Accused product Citation to Dynatrace materials (FAC ¶ 44) patent, claim functionality (FAC ¶ 44) 17) A method for the method disclosed in testing a the '175 Patent for testing website a website residing on a residing on a network using a test-enabled network using a browser test-enabled browser, said method comprising: accessing a by accessing a website to (for example, DPM's synthetic monitoring website to be be tested using the test-enabled tests a website by "[p]lay[ing] back scripted tested using the browser transactions," test-enabled https://www.dynatrace.com/capabilities/synth browser; etic- monitoring/, the website necessarily resides on a network, and DPM utilizes any number of browsers as its "test-enabled browser," https://www.dynatrace.com/technologies/) selecting a selecting a validation test (for example, DPM's synthetic monitoring validation test to be performed, such as includes both a recorder and play back engine to be the "Validate" and "Wait used to record and later select and play back performed; and for Validation" validation tests, functionality detailed in https://www.dynatrace.com/support/doc/synth the literature available on etic/recorder/; Dynatrace's website https://www.dynatrace.com/support/doc/synth etic/recorder/using-the-web- recorder/recording-a-transaction/; https://www.dynatrace.com/support/doc/synth etic/recorder/using-the-web- recorder/reviewing-and-editing-a- transaction/; these validation tests include
"Validate" and "Wait for Validation" functionality, https://www.dynatrace.com/support/doc/synth etic/recorder/using-the-web-recorder/web- recorder-actions/; https://www.dynatrace.com/support/doc/synth etic/recorder/using-the-windows- recorder/script-actions/wait-script-action/; https://www.dynatrace.com/support/doc/synth etic/recorder/advanced-scripting-guide/script- actions-and- properties/validate-actions/) performing the performing the selected (for example, DPM's synthetic monitoring validation test validation test using the includes both a recorder and play back engine using the test-enabled test-enabled browser used to record and later select and play back browser, validation tests, https://www.dynatrace.com/support/doc/synth etic/recorder /; https://www.dynatrace.com/support/doc/synth etic/recorder/using-the-web- recorder/recording-a-transaction/; https://www.dynatrace.com/support/doc/synth etic/recorder/using-the-web- recorder/reviewing-and-editing-a- transaction/) wherein prior to newly rendering the (for example, the Validate and Wait for said performing webpage to be tested by Validation functionality set forth above of the the test-enabled browser operates by "validat[ing] against" "a specific validation test so as to extract details of DOM element," for a particular that page using Document https://www.dynatrace.com/support/doc/synth web page, the Object Model ("DOM") etic/recorder/using-the-web-recorder/web- particular web elements, and store the recorder-actions/; page is same in a recorded script, rendered by the such as via the testing
test-enabled component of DPM https://www.dynatrace.com/support/doc/synth browser and etic/recorder/using-the-windows- examined so as recorder/script-actions/wait-script- action/; to at least (i) https://www.dynatrace.com/support/doc/synth extract details etic/recorder/advanced-scripting-guide/script- of the particular actions-and- properties/validate-actions/) web page using Document Object Model (DOM) elements pertaining to the web page with their associated at least one index and their values, and (ii) store the details of the particular web page in a recorded script, and wherein during and comparing the details (for example, the Validate and Wait for said in the newly rendered Validation functionality set forth above performing, the page against those stored operates by "validat[ing] against" "a specific particular web in the recorded script DOM element," page is newly https://www.dynatrace.com/support/doc/synth rendered by the etic/recorder/using-the-web-recorder/web- test-enabled recorder-actions/; browser and https://www.dynatrace.com/support/doc/synth details for the etic/recorder/using-the-windows- particular web recorder/script-actions/wait-script- action/; page as newly https://www.dynatrace.com/support/doc/synth rendered are etic/recorder/advanced-scripting-guide/script- compared to the actions-and- properties/validate-actions/) stored details in the recorded script.
See Docket No. 41-1. Contrary to Dynatrace's arguments that "SRI does not provide any factual detail to make its direct infringement allegations plausible", the chart above clearly illustrates that SRI has referenced specific product descriptions and functionalities of DPM to allege direct patent infringement allegations.
See Docket No. 31-3 at 20. It appears that each of the claim limitations have been addressed in the FAC:
See FAC ¶ 88 (emphasis added). A comparison of the asserted claim 6 of the '890 Patent and the FAC reveals that each claim limitation has been addressed in the FAC (e.g. a computer program code, a playback mechanism, a command that tests one or more scripts, and the verification of DOM elements):
Claim language Accused product ('890 patent, functionality (FAC ¶ Citation to Dynatrace materials (FAC ¶ claim 6) 88) 88) A non-transitory consist of non-transitory computer computer readable media, readable [sic], including at least medium computer program code including at stored therein for least computer providing a test-enabled program code web browser, for providing a test enabled web browser,
said computer readable medium comprising: computer computer program code (for example, DPM's synthetic monitoring program code stored therein for tests a website by "[p]lay[ing] back scripted for providing providing a test-enabled transactions," web browsing web browser, computer https://www.dynatrace.com/capabilities/synth capabilities; program code stored etic-monitoring/, the website necessarily and therein for providing a resides on a network, and DPM utilizes any test-enabled web number of browsers as its "test-enabled browser, said medium browser," comprising computer https://www.dynatrace.com/technologies/) program code for providing web browsing capabilities computer computer program code (for example, DPM's synthetic monitoring program code for testing capabilities of includes both a recorder and play back engine for testing a website hosted by a used to record and later select and play back capabilities of server and accessible to validation tests, play back engine used to a website the computer via a record and later select and play back hosted by a network wherein the validation tests, server and computer program code https://www.dynatrace.com/support/doc/synt accessible to for testing capabilities of hetic/recorder/; the computer the website provides https://www.dynatrace.com/support/doc/synt via a network, playback of one or more hetic/recorder/using-the-web- wherein the test scripts, including recorder/recording-a-transaction/; computer through the testing https://www.dynatrace.com/support/doc/synt program code component of the hetic/recorder/using-the-web- for testing Infringing Products, the recorder/reviewing-and-editing-a- capabilities of one or more test scripts transaction/) the website being separate from the provides website playback of one or more
test scripts, the one or more test scripts being separate from the website, wherein the wherein the computer (for example, DPM's synthetic monitoring computer program code for testing includes both a recorder and play back engine program code capabilities is configured used to record and later select and play back for testing to keep track of named validation tests, capabilities is DOM element property https://www.dynatrace.com/support/doc/synt configured to values within a webpage hetic/recorder/; keep track of of the website to provide https://www.dynatrace.com/support/doc/synt named DOM support for playback of hetic/recorder/using-the-web-recorder/recording-a-transaction/; element one or more test scripts https://www.dynatrace.com/support/doc/synt property values that were recorded from hetic/recorder/using-the-web-recorder/reviewing-and-editing-a- within a and/or are played back transaction/;) webpage of the via the test enabled web website to browser, provide support for playback of one or more test scripts that were recorded from and/or are played back via the test enabled web browser, wherein the wherein the use of the (these validation tests include "Validate" and use of the named DOM element "Wait for Validation" functionality that named DOM property values provides operate by "validat[ing] against" "a specific element support for synchronizing DOM element," property values playback of the one or https://www.dynatrace.com/support/doc/synt provides more test scripts and hetic/recorder/using-the-web-recorder/web-
support for allows the computer recorder-actions/; synchronizing program code for testing https://www.dynatrace.com/support/doc/synt playback of the capabilities of the hetic/recorder/using-the-windows- one or more website of the test recorder/script-actions/wait-script-action/; test scripts and enabled web browser to https://www.dynatrace.com/support/doc/synt allows the compensate for at least a hetic/recorder/advanced-scripting- computer portion of the webpage guide/script-actions-and-properties/validate- program code being dynamically actions/) for testing generated by AJAX capabilities of programming the website of the test enabled web browser to compensate for at least a portion of the webpage being dynamically generated by AJAX programming, and wherein at wherein at least one (for example, the Validate and Wait for least one command is provided in Validation functionality set forth above command is the one or more test operates by "validat[ing] against" "a specific provided in the scripts, and the at least DOM element," one or more one command operates, https://www.dynatrace.com/support/doc/synt test scripts, and when performed, to find hetic/recorder/using-the-web-recorder/web- the at least one a current index of at least recorder-actions/; command one DOM element of the https://www.dynatrace.com/support/doc/synt operates, when webpage based on a hetic/recorder/using-the-windows- performed, to: specified property name recorder/script-actions/wait-script-action/; find a current and/or property value, https://www.dynatrace.com/support/doc/synt index of at and (i) submit a named hetic/recorder/advanced-scripting- least one DOM event to the at least one guide/script-actions-and-properties/validate- element of the DOM element of the actions/) webpage based webpage having the
on a specified current index, or (ii) property name insert or verify a value in and/or property the at least one DOM value; and (i) element of the webpage submit a having the current index, named event to such as through the the at least one "Validate" and "Wait for DOM element Validation" features of the webpage described in Defendants' having the technical literature current index, or (ii) insert or verify a value in the at least one DOM element of the webpage having the current index.
See Docket No. 31-3 at 20; see also FAC ¶ 88. As evidenced in the chart above, there are numerous references to DPM which map the functionalities of DPM to the claim limitations of the asserted claim 6 of the '890 patent.
Dynatrace also argues that SRI has failed to address several elements in claim 1 of the '493 Patent but provides little explanation to support its argument. See Mot. at 12. Claim 1 of the '493 Patent reads:
Claim language ('493 Accused product patent, claim functionality (FAC ¶ Citation to Dynatrace materials (FAC ¶ 1) 132) 132) A non-transitory consist of non-transitory computer computer readable media readable [sic] medium including at least computer including at program code least computer stored therein for program code providing a test-enabled stored therein browser for testing a for providing a website residing on a test-enabled network browser for testing a website residing on a network, said computer readable medium comprising: computer said medium comprising (for example, DPM's synthetic monitoring tests program code computer program code a website by "[p]lay[ing] back scripted for interfacing for interfacing with web transactions," with web browsing components, the https://www.dynatrace.com/capabilities/syntheti browsing web browsing components c-monitoring/, the website necessarily resides components,
the web including DOM access on a network, and DPM utilizes any number of browsing methods browsers as its "test-enabled browser," components https://www.dynatrace.com/technologies/); including Document Object Model (DOM) access methods included in Dynamic Linked Libraries associated with a browser code library; computer computer program code (for example, DPM's synthetic monitoring tests program code for accessing a website to a website by "[p]lay[ing] back scripted for accessing a be tested transactions," website to be https://www.dynatrace.com/capabilities/syntheti tested; c-monitoring/, the website necessarily resides on a network, and DPM utilizes any number of browsers as its "test-enabled browser," https://www.dynatrace.com/technologies/); computer computer program code (for example, DPM's synthetic monitoring program code for rendering and includes both a recorder and play back engine for rendering examining at least one web used to record and later select and play back and examining page of the website so as validation tests, at least one web to extract details of https://www.dynatrace.com/support/doc/synthet page of the elements of the web page, ic/recorder/; website so as to and store the details of the https://www.dynatrace.com/support/doc/synthet at least (i) web page in a recorded ic/recorder/using-the-web-recorder/recording-a- extract details script, such as via the transaction/; of elements of testing component of the https://www.dynatrace.com/support/doc/synthet the web page, Infringing Products ic/recorder/using-the-web-recorder/reviewing- and (ii) store and-editing-a-transaction/), the details of the web page in a recorded script;
computer computer program code (for example, DPM's synthetic monitoring program code for selecting a validation includes both a recorder and play back engine for selecting a test to be performed, such used to record and later select and play back validation test as the "Validate" and validation tests, to be "Wait for Validation" https://www.dynatrace.com/support/doc/synthet performed; and features described in ic/recorder/; Defendants' technical https://www.dynatrace.com/support/doc/synthet documentation ic/recorder/using-the-web-recorder/recording-a- transaction/; https://www.dynatrace.com/support/doc/synthet ic/recorder/using-the-web-recorder/reviewing- and-editing-a-transaction/; these validation tests include "Validate" and "Wait for Validation" functionality, https://www.dynatrace.com/support/doc/synthet ic/recorder/using-the-web-recorder/web- recorder-actions/; https://www.dynatrace.com/support/doc/synthet ic/recorder/using-the-windows-recorder/script- actions/wait-script-action/; https://www.dynatrace.com/support/doc/synthet ic/recorder/advanced-scripting-guide/script- actions-and-properties/validate-actions/); computer and computer program (for example, the Validate and Wait for program code code for performing the Validation functionality set forth above operates for performing validation test using at by "validat[ing] against" "a specific DOM the validation least one of the DOM element," test using at access methods of the web https://www.dynatrace.com/support/doc/synthet least one of the browsing components, ic/recorder/using-the-web-recorder/web- DOM access wherein during the recorder-actions/; methods of the validation test, the at least https://www.dynatrace.com/support/doc/synthet web browsing one web page is newly ic/recorder/using-the-windows-recorder/script- components, rendered and details of actions/wait-script-action/; wherein during elements for the at least https://www.dynatrace.com/support/doc/synthet the validation one web page as newly ic/recorder/advanced-scripting-guide/script- test, the at least rendered are accessed via actions-and-properties/validate-actions/), one web page is the at least one of the newly rendered DOM access methods and and details of compared to the stored elements for the at least one web
page as newly details in the recorded rendered are script accessed via the at least one of the DOM access methods and compared to the stored details in the recorded script.
See Docket No. 31-5 at 16-7; see also FAC ¶ 132.
Since SRI has (i) sufficiently identified the accused product — DPM, and (ii) sufficiently described the functionality of DPM and tied it to the claim limitations in the patents-in-suit, the Court
Apart from the direct infringement allegations, Dynatrace also moves the Court to dismiss the indirect infringement allegations (both inducing infringement and contributory infringement under 35 U.S.C. § 271(b) and § 271(c)) and willful infringement allegations under 35 U.S.C. § 284.
35 U.S.C. § 271(b) provides that "[w]hoever actively induces infringement of a patent shall be liable as an infringer." Liability under Section 271(b) "can only attach if the defendant knew of the patent and knew as well that `the induced acts constitute patent infringement." See Commil USA, LLC v. Cisco Sys., Inc., ___ U.S. ___, 135 S.Ct. 1920, 1926-28, 191 L.Ed.2d 883 (2015) (quoting Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 131 S.Ct. 2060, 179 L.Ed.2d 1167 (2011)); see also Radware, Ltd. v. A10 Networks, Inc., 2013 WL 5373305, *2-4 (N.D. Cal. Sept. 24, 2013), (dismissing all claims for indirect infringement based on activities occurring before knowledge of patent-in-suit). Dynatrace argues that the FAC has not sufficiently pled Dynatrace's pre-suit knowledge. See Mot. at 13-14. On the other hand, SRI argues that it has pled SRI argues that it has pled a "constellation of facts" demonstrating Dynatrace had pre-suit knowledge of the patents-in-suit: (i) letters were sent from SRI to three different predecessors-in-interest to Dynatrace regarding SRI's patent portfolio, FAC ¶¶ 17-25, (ii) SRI entered into a Mutual Nondisclosure Agreement to share confidential technical information with one of those predecessors-in-interest, id. ¶ 26, (iii) six different patent applications filed by another predecessor-in-interest cite to SRI's patent portfolio, FAC ¶¶ 30-35, and (iv) during prosecution of a seventh patent application filed by that same predecessor-in-interest, the U.S. PTO rejected the application as being unpatentable over, inter alia, a "published application of the parent application of [certain of] the [patents-in-suit]." FAC ¶¶ 27-29; see also Docket No. 41 at 11. SRI's arguments are unpersuasive for several reasons.
First, two of the three letters were sent nearly a decade ago to other companies that do not mention any of the asserted patents, but merely patent applications, which eventually became a patent that is not amongst the patents-in-suit. See FAC ¶¶ 17-25. It appears that only one letter referenced applications that matured into certain patents-in-suit, but there is limited detail with regards the contents of this letter. See FAC ¶ 20-22. A patent application does not provide notice of the resulting patent for indirect or willful infringement, and certainly not when application is not for the patent-in-suit. See VIA Techs., Inc. v. ASUS Computer Int'l, 2015 WL 3809382, *3 (N.D. Cal. Jun. 18, 2015) ("The general rule in this district is that knowledge of a patent application alone is insufficient to meet the knowledge requirement for either a willful or induced infringement claim."); see also State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) ("[f]iling an application is no guarantee any patent will issue and a very substantial percentage of applications never result in patents. What the scope of the claims in patents that do issue will be is something totally unforeseeable.") As (i) the letters were sent before the patents existed, (ii) the content of the letters referenced a patent application which became a patent not asserted in this case, and (iii) "[t]he requisite knowledge of the patent allegedly infringed simply cannot be inferred from mere knowledge of other patents, even if somewhat similar," or from "alleged awareness of the [] patent
Second, even if the Court finds that the content and context of the letters form a plausible basis for inferring Dynatrace's pre-suit knowledge, the communications between SRI and Dynatrace's predecessors-in-interest do not establish that Dynatrace knew of any of the patents-in-suit. In SoftView LLC v. Apple Inc., Civ. No. 10-389-LPS, 2012 WL 3061027, *5 (D. Del. 2012), the court found that the allegation that a defendant had pre-suit knowledge of a patent because its subsidiary "had cited the published application of the parent application of the [patent-at-issue] during the prosecution of one of [the subsidiary's] own patents[,]" did not provide a plausible basis to infer the defendant's knowledge of the patent. Similarly in Varian Medical Systems, Inc. v. Elekta AB, 2016 WL 3748772 at *5 (D. Del. 2016), the court found that the "[p]laintiff needs to set out more than just the bare fact of the parent/subsidiary relationship in order to make out a plausible claim that" subsidiary's knowledge can be imputed to the parent. Here, SRI pleads that Keynote Systems, Gomez, and Compuware, are Dynatrace's predecessors-in-interest but provide no details as to the nature of the relationship between those entities and Dynatrace. We do not know, for instance, whether these companies were only those whose assets were acquired or whether they were part of a merger with Dynatrace. See FAC ¶¶ 17-28. We know nothing about any due diligence Dynatrace may have performed in connection with the prior succession. Nor do we know whether these entities were part of a long chain of predecessors several steps removed from Dynatrace. It is thus implausible to infer from the complaint that Dynatrace had pre-suit knowledge from communications between SRI and Dynatrace's predecessors.
Third, the Court finds that SRI's pleadings do not amount to a "constellation of facts" sufficient to find pre-suit knowledge. See Docket No. 41 at 11; cf. Softview LLC v. Apple Inc., Civ. No. 10-389-LPS, 2012 WL 3061027, *5-6 (D. Del. July 2012) (finding three different alleged bases of pre-suit knowledge to be, individually, "inadequate allegations," but denying motion to dismiss because, "[t]aken in combination, the Court conclude[d] that Softview has alleged a plausible basis from which one might reasonable infer that AT & T had knowledge of the patents-in-suit prior to this litigation.") While the court in Softview
Thus, the Court
The Court next considers whether SRI has pled sufficiently for its inducing infringement allegations with regards to Dynatrace's post-filing conduct. Dynatrace argues that SRI has not pled sufficient facts to show that Dynatrace specifically intended others to infringe. See Mot. at 15; see also Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357, 1368 (Fed. Cir. 2017) (citations omitted) ("mere knowledge of acts alleged to constitute infringement is not sufficient; rather the plaintiff must show "specific intent and action to induce infringement.") Dynatrace argues that SRI alleges that Dynatrace has unspecified "detailed documentation instructing users on how to use the Infringing Products in an infringing manner," but fails to provide it, explain its content or how it shows that Dynatrace specifically intended infringement. See Mot. at 15; see also FAC ¶ 48. Dynatrace cites to CAP Co., Ltd. v. McAfee, Inc., No. 14-cv-5068-JD, 2015 WL 3945875, at *15 (N.D. Cal. June 26, 2015) and argues that SRI, like the plaintiff CAP made passing references to "user manuals guides, and support articles," without ever saying what those materials contain. Id. The facts of this case, however, are not analogous to CAP. SRI has pled numerous references to public material on Dynatrace's website, which gives rise to an inference of specific intent. For instance, for the claim limitation "selecting a validation test to be performed; and performing the validation test using the test-enabled browser" under claim 17 of the '175 Patent, Dynatrace's materials recite step-by-step instructions, including specific steps as to how to "record [a user's] transaction" with a webpage, steps following that which include "play[ing] back the transaction", including "1. On the action's detail page, click Add Custom Validation to display the validation fields[;] 2. Select the validation type from the Criteria list [sic][;] 3. Type the validation string in the specify text field[;] 4. If you selected to [m]atch against an element, click Add Locator to define the element locators. Select whether the locator is CSS, DOM or XPath type..." See e.g. FAC ¶ 44; see also
The Court
"In order to state a claim for contributory infringement, a complaint must further plead (in addition to knowledge) that the accused product "has no
Dynatrace argues that the Court should dismiss the contributory infringement claims on the grounds that SRI (a) has not plausibly alleged direct infringement, (b) has not shown pre-suit notice of the patents and knowledge that its acts contribute to the alleged infringement, (c) never states any non-conclusory facts showing Dynatrace knew that an actual accused product (beyond general functionalities) was "especially made or adapted to infringe," In re Bill of Lading, 681 F.3d at 1337, and (d) does not allege that it lacks substantial non-infringing uses. See Mot. at 16-17. With regards to (a), as discussed above, the Court finds that SRI has plausibly alleged direct infringement. With regards to (b), as mentioned above, the Court finds that SRI has not alleged facts plausibly showing that pre-suit knowledge of the patents-in-suit. With regards to (c) and (d), to the extent SRI's contributory infringement claims survive based on post-filing conduct as to knowledge, the question is whether SRI has sufficiently pled that DPM, the infringing product, was "especially made or adapted to infringe the patents-in-suit." In re Bill of Lading, 681 F.3d at 1337. The FAC pleads that Dynatrace knows the infringing products to be "especially made or especially adapted for use in infringement," and that "DPM's synthetic monitoring, when used in its normal and intended usage (pursuant to the instructions set forth on Dynatrace's website), infringes...." FAC ¶ 44-46; see also FAC ¶¶ 66-68, 88-90, 110-112, 132-134, 154-156. The FAC sufficiently suggests that there are no other substantial uses of DPM that do not infringe. Thus, the Court
SRI alleges that Dynatrace has willfully infringed the patents-in-suit, in violation of 35 U.S.C. § 284. See FAC at ¶¶ 56, 78, 100, 122, 144, 166. Recovery of enhanced damages for willful patent infringement is governed by 35 U.S.C. § 284 as interpreted by the United States Supreme Court in Halo Elecs., Inc. v. Pulse Elecs., Inc., ___ U.S. ___, 136 S.Ct. 1923, 1935, 195 L.Ed.2d 278 (2016). In Halo, the Supreme Court held that the "sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad- faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." Id. at 1932. Thus, under Halo, while "courts should continue to take into account the particular circumstances of each case," enhanced damages are generally limited to "egregious cases of misconduct beyond typical infringement," such as those "typified by willful misconduct." Id. at 1933-35. In addition, the Federal Circuit has confirmed that "[k]nowledge of the patent alleged to be willfully infringed continues to be a prerequisite to enhanced damages." WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016).
SRI argues that the FAC has pled "specific factual allegations about [a defendant's] subjective intent, or any other aspect
FAC, ¶ 56, 78, 100, 122, 144, 166. These allegations are insufficient under the standard in Halo and may be contrasted from Finjan. In Finjan, Finjan alleged a more than twenty year direct relationship between itself and the defendant that included contracts, presentations, and discussion of the patent portfolio and that the defendant was an investor in Finjan for years before the suit. See Finjan, 2017 WL 2462423, at *2 (N.D. Cal. Jun. 2017). Those allegations in Finjan are more detailed and included a more direct relationship than the parties in this case and even then, the Finjan court found the allegations insufficient for a willful infringement claim. The Finjan court explained that the complaint "makes no specific factual allegations about Cisco's subjective intent, or any other aspects of Cisco's behavior that would suggest its behavior was `egregious.'" Id., at *5 ("because Finjan has failed to make sufficient factual allegations that it had pre-suit knowledge of the Asserted Patents or that Cisco's behavior was "egregious ... beyond typical infringement," it has failed to state a claim for willful infringement."). As noted above, SRI fails to plausibly allege pre-suit knowledge by Dynatrace. SRI does not allege that it notified Dynatrace of any of the asserted patents themselves or discussed them with Dynatrace before filing suit. Hence, SRI does not allege facts which amount to "willful, wanton, malicious, bad- faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." Halo at 1932. The Court thus
Lastly, Dynatrace argues in a footnote that SRI's prayer for injunctive relief should also be dismissed and/or stricken, given its status as a non-practicing entity ("NPE"). However, Dynatrace cites no allegations or evidence establishing that SRI is a non-practicing entity. See Mot. at 19; see also Docket No. 42 at 8. SRI has alleged that it exploits the patents-in-suit "by making, marketing, selling, and using products covered by the" patents-in-suit, "including its popular eValid™ software products." FAC ¶¶ 40, 62, 84, 106, 128, 150. In support of its legal argument, Dynatrace cites eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). The Supreme Court in eBay held that:
For the foregoing reasons, Dynatrace's motion to dismiss is
This order disposes of Docket No. 39.
