UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

CARNIVAL CORPORATION,

a Panamanian corporation,

Plaintiff,

V

DECURTIS LLC, a Delaware limited liability

corporation, and DECURTIS

CORPORATION,

a Florida corporation,

No. 1:20-cv-22945-RNS

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Defendants. )

DECURTIS'S MOTION TO DISMISS SECOND AMENDED

COMPLAINT FOR FAILURE TO STATE A CLAIM

09831 -00001 n241 0807. I

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DeCurtis, LLC and DeCurtis Corporation (collectively "DeCurtis") moved to dismiss

Carnival's original and first amended complaint on a number of grounds under Rule 12(b)(6).

Carnival's second amended complaint ("SAC") should likewise be dismissed for the following

reasonst (1) the contract claim (Count I) is defeated by the agreement's plain language and

related correspondence referenced in Carnival's allegations; (2) the trade secret claims (Counts II

and III) are based on amorphous, ill-defined "trade secrets" that overlap entirely with the

inventions taught by the '184, '516, and'514 patents; (3) the claim for infringement of the '184

patent (Count IV) is directed to ineligible subject matter under 35 U.S.C. $ 101 and fails to

adequately plead direct infringement; (a) the claims for infringement of the '184 patent and the

'514 patent (Counts IV and VI) fail to plausibly plead infringement under 35 U.S.C. $ 271(f);

and (5) the claim for infringement of the '516 patent (Count V) fails to adequately plead indirect

infringement. The Court should dismiss all of these claims with preiudice.

BACKGROUND

1. Carnival hires DeCurtis to design its guest engagement system.

DeCurtis is an Orlando-based technology company that designs and manufactures

systems using wireless communications, small portable devices, and custom software to enable

businesses such as cruise lines to improve guest experiences. (SAC fl8, ECF 88) Around June

2014, Carnival retained DeCurtis to assist in the prototyping phase of Carnival's Project Trident,

which involved guest engagement technology. (Id. at '!i1T17, 23) ln July 2014, DeCurtis and

Carnival entered into a non-disclosure agreement and a separate Master Services Agreement

("MSA") to design a guest engagement system for Carnival . (Id. at fl24)1 Reco gnizingDeCurtis

was in the business of designing and building these systems, the MSA explicitly gave DeCurtis

the "unencumbered right" to provide similar services to other clients, including using o'know

how" and "experience" gained during the Carnival project itself:

4.4 Right to Perform Services for Others. Company shall have the unencumbered

right to use the general knowledge, know how, experience or the skill ... gained

while providing Services under this Agreement for the purpose of executing

projects for other Company clients, subject to Company maintaining the

confidentiality of the Carnival Confidential Information.

1 Although Camival did not attach the MSA to the SAC, the agreement is central to its claims

and the Court can therefore consider its terms on a motion to dismiss. See SFM Holdings, Ltd. v.

Banc of Amer. Sec., LLC,600 F.3d 1334, 1337 (l1th Cir. 2010).

I 09831 -00001n241 0807.1

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(Id. atJ[27; MSA at g 4.4, Ex. A)2 DeCurtis and Carnival also agreed to exclude several things

from the definition of "Carnival Confidential Information," including information alreadyknown

to DeCurtis; information already in the public domain, or that subsequently entered the public

domain; and information independently developed by DeCurtis. (MSA at $ 4.1, Ex. A)

2. DeCurtisos Role with Carnival's "Project Trident."

Carnival claims to have invested "hundreds of millions of dollars" and "extensive human

capital" into Project Trident. (SAC fl'1]19, 20, ECF 88) Carnival says that DeCurtis personnel

working on the project "had access to substantially all Carnival's extant confidential information,

trade secrets, and other Carnival Information," which supposedly includes:

documents describing Carnival's vision, strategy, plans (e.g., strategy presentations),

experience platform models, technical design documents, and list of strategic

vendors. Those materials included Carnival's proprietary plans for combining a

wearable device containing Bluetooth Low Energy and Near Field Communications,

mobile applications, and a digital engagement system, all functioning as a unified

system on a multi-layer microservices platform technical architecture. The materials

Carnival provided to DeCurtis also included development schedules and team plans,

early concepts for Carnival's wearable device, and Carnival's experience vision.

*.t **

Carnival's required hardware requirements; enterprise architecture; corporate

abstraction layer of strategic services, interface layer designs, data models, database

structures, and data interface designs and adapters; API dependencies; non-functional

requirements; Camival's particularized agSle development methodology (timing and

ordering of development sprints for different components); web service needs; show

plans; user interface plans; design work; integration of technical components; testing

plans; site surveys; functional plans; and studio shows.

(Id. at1l1l32-34) By the end of 2015, DeCurtis was no longer involved with the project. (Id. at

fl34) DeCurtis has since had no access to any of the project's digital deliverables or source code,

and the SAC does not allege otherwise.

3. Carnival obtains patents and issues correspondence to DeCurtis's clients.

Camival obtained patents for the technology associated with Project Trident. (Id. at1W3)

In this case, Carnival asserts infringement of three of these patents: Nos. 10,045,184 (the "'184

Patent"), 10,049,516 (the "'516 Patent"), and 10,157,514 (the "'514 Patent"). (Id. aI fla5) The

claims are based on guest engagement systems DeCurtis was or is providing to other cruise

lines-specifically, Norwegian Cruise Lines ("NCL") and Virgin Cruise Lines. (Id. at !ffl86-96) In

2 E*hibit A to this motion, the MSA, was filed under seal pursuant to the Court's Order (ECF 21)

and, therefore, is not attached to or filed with this motion.

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January 2020, Carnival threatened DeCurtis and NCL with patent infringement claims. (Id. at

fl92) In February 2020, Carnival threatened Virgin with patent infringement claims (id. atl93),

and demanded access to DeCurtis's records under the guise of the MSA. (Id. atflg7)

ARGUMENT

Where, as here, a party cannot state a cause of action after amending (now twice), the

Court may dismiss with prejudice. McDonough v. City of Homestead, TTl Fed. App'x 952,956

(llth Cir. 2019) (after o'one opportunityto replead comes and goes. . . the district court [may]

dismiss with prejudice . . . .")).

I. Count I should be dismissed because the allegations in the SAC are contradicted by

the plain terms of the MSA and referenced correspondence.

Carnival alleges that DeCurtis breached the MSA by: (1) making unauthorized

disclosures andlor use of Carnival's confidential information, work product and deliverables, and

(2) refusing to comply with Carnival's audit demands. (SAC fll05, ECF 88) Neither theory can

survive dismissal. Carnival's failure to distinguish its trade secrets from its "confidential

information" in its breach of contract claim is addressed infra at section II.A.3 This section

addresses the theory that DeCurtis breached by supposedly refusing Carnival's audit demand.

Camival alleges that concerns over DeCurtis's alleged "misuse" of "Carnival confidential

information, proprietary information, and trade secrets" caused Carnival to send DeCurtis a letter

exercising its audit rights under the MSA. (Id. at !J97) Carnival alleges generally that "DeCurtis

has refused to permit such an audit." (Id. at fl100) But, Carnival's allegations are belied by the

plain language of the MSA and the related correspondence between the parties that Carnival

references in the SAC but fails to attach.a

The same Carnival lawyer who threatened NCL and Virgin sent a letter demanding

sweeping access to DeCurtis's documents under the guise of the audit provision of the MSA,

3 Courts routinely combine the analysis for pleading deficiencies in contract-based "confidential

information" claims and trade secret misappropriation claims because both require that the

plaintiff describe what was allegedly taken. See, e.g., Agostinacchio v. Heidelberg Eng'g, Inc.,

20lg WL 3243408, at *6 (S.D. Fla. Feb. 5,2019) (dismissing claims for misuse of confidential

information and misappropriation of trade secrets because the defendant "cannot divine from

these allegations what trade secrets or confidential information he allegedly misappropriated").

a On a motion to dismiss, the Court may consider documents outside of the complaint that are

indisputably authentic and central to the complaint's allegations. SFM Holdings, Ltd., 600 F.3d

at 1337 . When there is a conflict between allegations of a complaint and the exhibits thereto, the

exhibitsgovern. GrffinIndust., Inc.v. Irvin,496F.3d 1189, 1205-06(llthCir.2007).

a

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requesting to inspect documents that would show l;f DeCurtis had employed Carnival's

information for its own use. (2120120 Ltr., Ex. B) Camival demanded the audit be "conducted by

a computer forensics firm working with Carnival's outside legal counsel at Orrick." (Id') The

MSA provides no such right. By its plain language, the MSA requires only that DeCurtis ookeep

accurate and complete records of all matters relevant to or as required by fthe MSA]." (See

MSA, $ 3.4, Ex. A) The MSA permits Carnival to inspect DeCurtis's books and records "at any

reasonable time or times upon prior notice." Qd.)

Although Camival was clearly engaged in a fishing expedition, or trying to drum up a

claim, DeCurtis offered to allow Camival to inspect documents relating to the work DeCurtis did

under the MSA, including any source code to which DeCurtis had reasonable access,s records of

expenses and receipts, policies and methods used to protect confidential information, and

documents relating to statements of work that Carnival had identified. (3112120 Ltr', Ex. C)

Carnival rejected this offer. (3123120 Email String, Ex. D) Carnival's bald allegation that

DeCurtis simply refused to permit an audit under the MSA does not make it so. The documents

referenced in the SAC control, requiring dismissal of Count I.

I Counts II and III should be dismissed because Carnival fails to identify any trade

secrets with the degree of particularity required by both Florida and federal law.

The law requires Camival to plead substantially the same elements for its state and

federal trade secret claims. Under the Florida Uniform Trade Secret Act ("FUTSA"), Carnival

must allege that: "(1) the plaintiff possessed secret information and took reasonable steps to

protect its secrecy; artd (2) the secret it possessed was misappropriated." Viable Resources, Inc.

v. Belyea,2016 WL 1334285, at *4 (M.D. Fla. Dec. 1,2016) (citing Border Collie Rescue, Inc.

v. Ryan,418 F. Supp. 2d 1330,1338 (M.D. Fla. 2006)). Because the elements are identical under

the Defend Trade Secrets Act ("DTSA"), courts analyze DTSA and FUTSA claims together.

M.C. Dean, Inc. v. Cty. Of Miami Bch., Florida,199 F. Supp. 3d 1349,1353-56 (S:D' Fla. 2016).

A. Carnival fails to plead alleged trade secrets with particularity.

Carnival claims trade secret protection for the "Project Trident information that Carnival

provided to DeCurtis includfing] financial, business, scientific, technical, economic, and

engineering information." (SAC 1T109, ECF 88) Carnival alleges general categories of

5 DeCurtis offered to provide documents to which it had "reasonable access" because the digital

deliverables were placed on Carnival's local servers, not kept by DeCurtis. Nor did DeCurtis

have access to the source code. (,See 3/23120 Email String, Ex. D)

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information, some of which might, under certain conditions and if identified with particularity,

qualify for trade secret protection, such as o'prototypes; software; source code; architecture

documents; technical specifications (e.g., data interface designs); databases; enterprise-ready

web services; presentations; and documentation with respect to operations procedures, creative

strategy, experience content, application support, deployment plans, and testing." (Id. 131; see

also ffi33,34, 111) But Carnival does not say what is merely "confidential information" and

what constitutes a"trade secret," as that term is defined under DTSA or FUTSA. See 18 U'S.C.

$ 1839(3) (defining trade secret under DTSA); Fla. Stat. $ 688.002(4) (defining trade secret

under FUTSA). It is not enough for Carnival to vaguely allege general categories of information'

Rather, Carnival's "complaint must 'describe the subject matter of the trade secret with

sufficient particularity to separate fthe trade secret] from matters of general knowledge in the

tfade."'6 ProV Int'\, Inc. v. Lucca,2019 WL 5578880, at *3 (M.D. Fla' Oct' 29,2019) (citation

omitted) (conclusory assertion that defendants misappropriated "proprietary practices" and

"operating procedures" insufficient); Am. Registry, LLC v. Hanaw,2013 WL 6332977, aI*3-4

(M.D. Fla. Dec. 5, 2013) ("broad and generic categories of information" are insufficient to plead

existence of a trade secret); accord Jobscience, Inc. v. CVPartners, Inc.,2014 WL 1724763, at

*3 (N.D. Cal. May 1,2014) (holding that "Defendant cannot reasonably prepare its defenses and

search for art in the field if the boundaries of the trade secret are so undetermined"); Lycoming

Engines v. Superior Air Parts, lnc.,2014WL1976757, at *8 (N.D. Tex. May 15,2014) (holding

that allegations referring to "drawings, process, specifications, [and] procurement specification"

were insuffrciently particular to satisfy trade secret pleading requirements); Medafor, Inc. v'

Starch Med. lnc.,2009 WL 2163580, at *11(D. Minn. July 16, 2009) (holding that "business

methodologies, formulas, devices, and compilations of information, including suppliers and

customers" were insufficiently particular to satisfy trade secret pleading requirements).

This is especially important here, where Carnival:

. acknowledges that DeCurtis "designs, develops, engineers, manufactures, markets,

and sells systems and methods for providing guests' engagement with cruise ship

facilities through the use of wireless sensing technologies" (SAC fl8);

o agleed in the MSA that "information that was already known to fDeCurtis] . . . prior

to disclosure of it to fDeCurtis] by Carnival" "shall not be considered [Carnival]

6 Florida law requires a trade secret plaintiffto disclose its trade secret prior to seeking discovery.

See Revello Med. Mgmt., Inc. v. Med-Data Infotech, Inc.,50 So. 3d 678,679-80 (Fla. 2d DCA

2010) (describing obligation to disclose trade secrets with o'reasonable particularity").

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Confidential Information (MSA at $ 4.1, Ex. A); and

. agtreed in the MSA that DeCurtis "shall have the unencumbered right to use the

gEneral knowledge, know how, experience or the skill . . . gained while providing

Services under this Agreement for the purpose of executing projects for other

Company clients." (MSA at $ 4.4, Ex. A)

Camival's vague allegations make it impossible to distinguish between its alleged trade

secrets and (a) the knowledge DeCurtis brought to Carnival or (b) general knowledge in the field,

neither of which can form the basis of Carnival's claims. See ProV Int'1, 2019 WL 5578880, at

*3; Jobscience, 2014 WL 1724763, at *3 (holding that vague descriptions made it "virtually

impossible to distinguish the alleged trade secrets from knowledge in the field").

Carnival amended its trade secret claim rather than defend against DeCurtis's initial

motions to dismiss, but neither of two substantive amendments is sufficient to avoid dismissal.

First, Carnival added parugraph 111 to the trade secret count, but that paragtaph merely rscasts

the same general categories it previously alleged in paragraph 31 of the original complaint.T

Compare (SAC fl31, ECF 88) with (id. atiill11) ("prototypes" with "Project Trident prototypes");

("software" with "Project Trident software"); ("architecture documents" with "Project Trident

hardware and software architecture"; ('otechnical specifications (data interface designs)" with

"Project Trident technical specifications and data interface designs").8 What particular "Project

Trident prototype" is Carnival talking about? What architecture documents? What technical

specifications? Carnival will not say; it leaves the Court and DeCurtis to guess.

The answers to these questions are essential and a plaintiff with a colorable trade secret

claim "ought to be able to identify, up front, and with specificity the particulars of the trade

secrets without any discovery." Jobscience, Inc., 2014 WL 1724163, at *1 ("Experience has

shown that it is easy to allege theft of trade secrets with vagueness, then take discovery into the

defendants' files, and then cleverly specify what ever [sic] happens to be there as having been

trade secrets stolen from plaintiff."). Camival is no different from the plaintiff in Jobscience (and

many other cases) where vague pleadings are used to attempt to gain access to discovery and fill

in the blanks with cleverly crafted particulars. Carnival is likely to argue-as it has previouslythat a rule forcing it to disclose the particulars would render its trade secrets meaningless, but

that is not true. Carnival could have identifred the specific "step-by-step plans," interface

7 Paragraph3l of the SAC is identical toparagraph 31 of the first two complaints.

t These aie only a sample of the duplicative allegations. A review of the remainder confirms that

Carnival added nothing new to its pleading beyond the same broad categories of information.

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designs," 'otesting plans and results" by reference to a file niune, creation date, or other

identifying marker, or Camival could have provided the actual trade secrets to DeCurtis in a

confidential document and filed it under seal with the Court. Carnival could have pursued a host

of avenues to comply with the trade secret disclosure requirements, but it chose not to do so even

after DeCurtis pointed out these defects in its first two motions to dismiss. The reality is that

Camival does not have any trade secrets to protect, so it wishes to keep its claims as amorphous

as possible. This is now unmistakably clear because we are several months into discovery and

Carnival still refuses to provide the particulars of its trade secret claim.e Because none exists.

Second, Carnival now claims that DeCurtis misappropriated "negative knowledge about

unsuccessful strategies, methods, and technologies that did not work or are not likely to work in

light of Carnival's experience on Project Trident." (SAC 11112) Even if "negative knowledge"

could qualify for trade secret protection, Carnival expressly agreed that DeCurtis "shall have the

unencumbered right to use the general knowledge, know how, experience or the skill. . . gained

while providing Services under this Agreement for the purpose of executing projects for other

Company clients." (MSA at $ 4.4, Ex. A) (emphasis added). Any trade secret claim centered on

"know how" (positive or negative) gained while working on Project Trident is barred by the

plain language of the MSA. Accordingly, the Court should dismiss Counts II and III.

B. The issuance of the'184r'514, and'5L6 patents are an abandonment of secrecy.

Pleading with reasonable particularity becomes even more critical where, as here, the

supposed trade secrets collide with the very same technology claimed in the patents asserted.

(See SAC fl,1T43-S5) To the extent that Carnival's trade secrets are coextensive with the inventions

publicly disclosed and claimed in the asserted patents, they are entitled to no trade secret

protection because "[t]he Supreme Court has established that the patenting of a product negates

the possibility that the product is also a trade secret." kdder Boat Ramp Sys., Inc. v.

Hillsborough County, Fla.,54 F. Supp.2d 1300, 1303 (M.D. Fla. 1999) (citing Christiansonv.

Colt Indus. Operating Corp.,486 U.S. 800 (1988)). "After apatenthas issued, the information

contained within it is ordinarily regarded as public and not subject to protection as a trade

secret." On-Line Tbch. v. Bodenseewerk Perkin-Elmer,386 F.3d 1133, 1141 (Fed. Cir.2004); see

e There have been two discovery hearings related to Carnival's failure to disclose its trade secrets

with "reasonable particularity." Most recently, at the October 22heaing, Carnival acknowledged

that it has not provided any source code even though its interrogatory response identifuing its

trade secrets invoked Rule 33(d) in lieu of providing a substantive response.

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also BondPro Corp. v. Siemens Power Generation, Inc., 463 F.3d 702, 106 (7th Cir. 2006)

("Publication in a patent destroys the trade secret[.]"); Scharmer v. Carrollton Mfg. Co.,525 F.2d

95,99 (6th Cir. 1975) ("If a trade secret is patented there is no further right to secrecy."); Wtal

State Canada, Ltd. v. DreamPak, LLC, 303 F. Supp. 2d 516, 525 (D.N.J. 2003); Hickory

Specialties, Inc. v. Forest Flavors Intern., Inc.,26 F. Supp. 2d 1029,1033 (M.D. Tenn. 1998).

And that rule makes sense. Trade secrets derive their legal protection from their

inherently secret nature. Patents, by contrast, can be protected only through public disclosure. To

comply with the enabling requirement in 35 U.S.C. $ 112(a), Camival was required to disclose

sufficient information regarding the subject matter of the 'I84, '516, and'5I4 patents to enable

one skilled in the art to make and use the claimed invention. Although a filed patent application

is initially kept in confidence by the United States Patent and Trademark Office, when it issues it

is published for the world to see. 35 U.S.C. $$ 122(a), (b)(1).

The same holds true for any "confidential information" under the MSA that does not

otherwise qualify for trade secret protection. (See MSA, $ 4.1, Ex. A) ("The following shall not

be considered Confidential Information (iii) information that is in the public domain or

hereafter enters the public domain through no fault of [DeCurtis]"). Put simply, "[t]he element of

secrecy evaporated with the issuance of the patent." Keystone Plastics, Inc. v. C&P Plastics, Inc.,

340 F. Supp. 55,74 (S.D. Fla. 1972) (applyng Florida law).

Finally, the "features, functions, and characteristics of the design and operation" of a

computer-based system are self-disclosing and cannot be a trade secret. See Agency

Solutions.Com, LLC v. TriZetto Grp., lnc.,819 F. Supp. 2d 1001, 1016, 1021-28 (E.D. Cal.

2011). Accordingly, Carnival's allegation that DeCurtis must have misappropriated trade secrets

because "the Band" is "incredibly similar" to the OceanMedallion, such as "granting cabin

access, permitting ticketless boarding, making payments, pinpointing traveler location for

beverage delivery, and facilitating onboard purchasing" fails as a matter of law.

These pleading deficiencies are particularly glaring when considered against Carnival's

decision to incorporate each ofits general trade secret allegations into both the patent and trade

secret counts of its SAC, effectively treating its trade secrets and patent claims as one and the

same. That cannot be. Stripped of what has been disclosed in its patents, as well as any outward

facing functions or features, nothing remains for Carnival to claim as a secret.

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ilI. The Court should dismiss Count IV because the '184 patent is directed to ineligible

subject maffer under 35 U.S.C. $ 101.

Count IV should be dismissed because the'184 patent seeks to claim amere "abstract

idea." The Supreme Court has "long held that [the patent statute] contains an important implicit

exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice

Corp. Pty. Ltd. v. CLS Bank Int'L, 573 U.S. 208, 216 (2014). Alice sets forth a two-step

framework for determining patent eligibility. At step one, the court assesses whether the claims

are directed to an abstract idea by determining the o'focus of the claimed advance over the prior

art." Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017)

(quotation omitted). Where the "character of the claim" is directed, without more, to the broad

concept of communicating information wirelessly, it is an abstract idea under Alice step one.

Chamberlin Grp. v. Techtronic Indus. Co.,935 F.3d 1341, 1347 (Fed. Cir.2019).

If a claim is directed to an abstract idea, the analysis proceeds to step two, where the

court searches for an "inventive conceptD-i.e., "an element or combination of elements that is

'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon

the [ineligible concept] itself."' Alice,573 U.S. at2l7-18. A patentee cannot avoid ineligibility

by limiting the idea to "a particular technological environment," id. at 222, or by adding "wellunderstood, routine, conventional" features, id. at 225. The mere recitation of generic computer

components does not transforrn an abstract idea into a patent-eligible invention. Id. at223,225.

Eligibility under $ 101 is generally a question of law. Interval Licensing LLC v. AOL,

lnc.,896 F.3d 1335, 1342 & n.4 (Fed. Cir.2018). In appropriate cases, eligibility determinations

are amenable to a Rule 12 determination. E.g., ChargePoint, Inc. v. SemaConnect, Inc.,920F.3d

759,776-77 (Fed. Cir. 2019) (affirming motion to dismiss); Interval,896 F.3d at 1348 (affirming

judgment on the pleadings). This is such a case.

A. Step 1: The 'L84 patent claims are directed to the abstract idea of wirelessly

communicating guest information so that it may be logged at a central server.

All of the asserted claims (claims I-3,7-8, and 11-15) of the'184 patent are directed to

an abstract idea. Each of the asserted independent claims merely recite generic, high-level

computer components for enabling the abstract idea of wirelessly communicating guest

information so that it may be logged at a central server. Specifically, the claims recite a "guest

engagement system" comprising "a plurality of portable guest devices" that operate wirelessly

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within a generic oosensor network." Put simply, the '184 patent teaches the age old practice of

logging guest information, but in a new computer-based environment.

All asserted independent claims utilize pre-existing standards for wireless communication

protocols. Claims I and 7 recite guest devices using o'Bluetooth low energy communications"

("BLE"), while claim 11 requires both BLE and "near field communications." Claim 11 recites

that when using BLE communications, the portable guest device must be configured to

selectively operate according to two distinct modes ("bi-directional" and "beacon" modes). The

patent specification, however, admits these wireless communication protocols and technologies

were embodied in pre-existing "standards." (See SAC, Ex. A, ECF 88, '184 Patent at 6:12-15)

("[A] medallion can be configured to communicate according to both near field communication

(NFC) standards and Bluetooth low enefgy (BLE) standards . ."), 15:30-35 ("[A] first

transceiver operates according to the BLE standard . . . while a second transceiver operates

according to the NFC standard (e.g., a radio-frequency identification (RFID) standard).")

The claims further specify that a generic "sensor network" be connected via a

"communication network" and "communicatively coupled" to a "central seryer." But, the only

requirement of the "central server" is that it maintain a generic "1og" for storing information

received from guest devices. There is nothing unique about the computer equipment necessary to

implement this claimed network. The patent admits that "any of the servers described herein,"

may be implemented with high-level functional block diagrams. (Id. at 38:55-67) The patent

concedes that this architecture was "conventional." (Id. at 39 9-12 ("The hardware elements,

operating systems and programming languages of such servers are conventional . . . ."))

The remaining independent claim limitations fail to add any substance to the abstract idea

of wirelessly communicating and logging guest information. Claims I and 7 simply add that the

sensor network include generalized "interface devices" for "personalized services" (claim 7), and

"access panels" with basic computer equipment to interface with an "electronically controlled

door lock" (claims 1 and 7). Neither the specification nor the claims describe any specific new or

improved "interface device," o'access panel," or'oelectronically controlled door lock." The claims

merely recite these broad, generalized elements with no technical detail.

Nor do the asserted dependent claims add anything of substance. Claim 2 merely

requires a "reservation server," with a "list of unique identifiers," that is used by a generic

"access panel" in determining whether to grant access. Claim 3 requires that an access panel

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report signals received to the central server, which is part and parcel of the abstract idea. Claim 8

recites a generic laundry list of well-known devices that may satisfy the "interface device"

limitation of claim 7. Claim 15 simply restates the insufficient "beacon" limitations discussed

above. While claims 12, 13, and 14 require that sensors engage in "two-way," o'bi-directional,"

and/or "secure encrypted communications," no further specificity is provided. In sum, the

asserted claims are vague, high-level, lacking in technical specificity, and therefore firmly

directed to the concept of wirelessly communicating information in the abstract.

a. Allegations in the SAC cannot render the claims less abstract.

Carnival's SAC attempts to bolster the eligibility of the '184 patent with 33 paragraphs of

allegations spanning 17 pages. (SAC tTfl 51-84) According to these allegations, the'184 patent

"enabled various technical improvements," including "(1) a new and superior user interface, (2)

relocation of demanding computer-intensive resources, (3) an improved beacon-centric model of

communication to the environment, (4) improved battery life and power consumption, (5)

enhanced security through novel door lock mechanism designs, and (6) an improved location

determination system particularly suited for environments such as a cruise ship." (SAC 1T 51)

But, these self-serving allegations cannot backfill the deficiencies in the actual claims. Each of

these six purported 'oimprovements," as well as the allegations that follow, are either (i) not

required by the claims, and thus irrelevant; and/or (ii) contradicted by the intrinsic evidence.

i. The purported improvements are not required by the claims.

Carnival's alleged technical improvements are not reflected in specific claim limitations

and thus cannot render the patent non-abstract. See, €.g., ChargePoint,920 F.3d at 769

("The $ 101 inquirymust focus on the language of the Asserted Claims themselves . . . '"). For

example, the '184 claims do not mention a "superior user interface," nor do they mention

relocating any "computer-intensive" resources. There are no claim limitations that require an

"improved beacon-centric model" or "improved battery life"-the claims are broad enough to

capture conventional beacon-emitting devices that make no improvement to battery life. While

claims 13 and 14 make passing reference to "secure encrypted communication," the claims fail

to specify any detail regarding the means of "encrlption" and say nothing about "enhancing

security'' in the context of a "novel door lock mechanism." Finally, although Camival alleges

location determination "particularly suited for environments such as a cruise ship" (SAC'lT 5l),

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the claims are not limited to a "cruise ship" at all.10 (,See '184 patent at 1:56-61 , 5:28-49)

Carnival extols the alleged benefits of the patent's multi-mode devices. (SAC nn72-76)

But, while the patent specification may describe certain power-saving features (see'184 patent at

16:23-58), the claims themselves lack these technical requirements. Instead, the claims merely

require a "first" bi-directional communication mode and a "second" beacon communication

mode (claim 11), without any further technical detail or limitation. Indeed, as written, the claims

are broad enough to cover "first" and "second" modes that do not realize any technical benefit.

See ChargePoint, g20 F.3d at 769 ("Even a specification full of technical details about a physical

invention may nonetheless conclude with claims that claim nothing more than the broad law or

abstract idea underlying the claims, thus preempting all use of that law or idea.").

Camival's allegations regarding a reduction in the complexity, energy usage, and costs of

network infrastructure fare little better. (SAC 11167, 68, 54, 78) In support, Carnival cites from

the specification's disclosure of "peripheral devices" ('184 Patent at 8:3-8). (SAC !f67) But,

these allegations are irrelevant, because the "peripheral device" limitation only appears in

unasserted claims. Besides, while Carnival alleges that reducing complexity may have been a

goal of the system, the claims require no specific components or functions that would facilitate

any of the processing, power consumption, configuration, or space saving benefits that Camival

touts.

Finally, no weight should be given to Carnival's allegations regarding statements made

by DeCurtis about its own DXP System (SAC nn60-62,71), alleged industry praise for its own

custom-built OCEAN platform (SAC 1T1T63, 77), or the implementation of systems by Carnival's

competitors (SAC fl63). The eligibility of the '184 patent claims must be assessed based on the

specificity of the claim language itself--not by proxy to the features of specific systems that

Carnival contends fall within the scope of those claims. ChargePoint, 920 F .3d at 7 69 .

ii. The FAC's "beacon" allegations are contradicted by the '184

prosecution history which is part of the intrinsic record.

Carnival's SAC makes much of the "beacon" requirement of the claimed "portable

devices." (SAC fl56 (alleging that prior efforts "a11 focused on utilizing BLE beacons as

stationary objects"), u57 (alleging that invention "flipfs] the entire frame of reference"), fl58

(discussing portable beacons), u60-61 (discussing "inverted model"). However, to the extent

t0 Because the claims are not limited to any particular context, Carnival's "wayfinding"

allegations (SAC ''l{fl 54, 64-66) are easily disregarded'

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Carnival is claiming that it was the first ever to conceive of implementing a beacon in a portable

device, that allegation is clearly contradicted by the prosecution history of the'184 patent.ll

During prosecution, the patent examiner rejected the then-existing claims over prior-art patent

application 201610066123 ("Ko"), finding that Ko disclosed the very same ooinverted" model of

communication Carnival now tries to pass off as its own. (Ex. E, '184 prosecution history,

October 20,2017 Final rejection at pp. 3-4). In its February 20,2020 response to the examiner's

rejection, Carnival did not dispute that the prior art disclosed portable beacon devices using BLE

communications, but rather acquiesced to the Examiner's finding by cancelling its broader

claims in favor of more nalrow, dependent claims. (Ex. F, Feb. 20, 2020 Applicant Remarks at

pp. 9-10) The Court should therefore disregard Carnival's allegations that the portable-beacon

limitations is somehow a novel improvement conferring patent eligibility.

b. The specification confirms that the patent is directed to an abstract idea.

Tellingly, the "background" of the invention section of the patent itself fails to mention

any of the supposed network, communication, or infrastructure improvements that Carnival

details in the SAC. Rather, as this section describes, the "invention" "relies on recent

improvements in low power wireless communication technologies and distributed sensor

networks . . . ." ('184 Patent at 1:45-49) At most, the patent describes how to piggy-back off

these pre-existing technologies, to "provide novel services to [] guests without requiring guests

to proactively identify andlor authenticate themselves." (Id. at l:44-49) Thus, as the patent freely

admits, the "invention" does not involve any technological improvement to a network, sensor, or

method of wireless communication. Rather, the patent simply uses pre-existing technology as a

"tool" to streamline business and basic human activity (here, guest service), which is insufficient

to establish eligibility. Intellectual Ventures I LLC v. Symantec Corp.,838 F.3d 1307, 1313 (Fed.

Cir. 2016) (abstract ideas embrace "fundamental economic practices long prevalent in our

system of commerce" including "longstanding commercial practices" and o'methods of

organizinghuman activity''); Electric Power, Elec. Power Grp., LLCv. Alstom S.1.,830 F.3d

1350, 1354 (Fed. Cir. 2016) ("[T]he focus of the claims is not on . an improvement in

computers as tools, but on certain independently abstract ideas that use computers as tools.")

Moreover, 'omerely adding computer functionality to increase the speed or efficiency of [a]

rr The prosecution history may be considered on a Rule 12 motion considering patent eligibility.

Data Engine Techs LLC v. Google LLC,906 F.3d 999, 1008 & n.2 (Fed. Cir. 2018); Cleveland

Clinic Found. v. True Health Diagnostics LLC,760 Fed. App'*. 1013, 1019 (Fed. Cir. 2019).

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process does not confer patent eligibility on an otherwise abstract idea." Ericsson v. TCL

Comm'n Tech. Holdings,955 F.3d 1317, 1330-31 (Fed. Cir.2020) (quotation and citation

omitted); see also Credit Acceptance v. Westlake Servs.,859 F.3d 1044, 1055 (Fed. Cir. 20ll)

("mere automation of manual processes using generic computers does not constitute a patentable

improvement in computer technology''). Thus, the claims are ineligible abstract ideas.

c. The most relevant Federal Circuit case law confirms that the '184 patent

claims are abstract under Alice.

The claims of the'184 patent are similarto those found abstract inChamberlin.There,

the Federal Circuit considered claims for wirelessly communicating information about a

moveable barrier, for example, a garage door. 935 F.3d at 1345. The court noted that neither the

patent specification nor the claims purported to improve upon prior-art moveable barriers, or the

general technique of wireless communication. Id. at 1347 ("The specification admits that the act

of transmitting data wirelessly is 'well understood in the art,' and no other changes to the

generically claimed movable barrier operator are recited in the asserted claims or described in the

specification."). The patentee tried to argue that the claims were directed to a 'onovel

combination" of a prior-art moveable barrier and wireless communication, but the Court rejected

this argument because "merely limiting the field of use of the abstract idea to a particular

existing technological environment does not render the claims any less abstract." Id. at 1348.

Also instructive is the Federal Circuit's decision in ChargePoint, which involved claims

for wirelessly communicating demand information from charging stations for electric cars over a

network to a remote server. 920 F.3d at 766. Reviewing the specification, the Court found that

the invention was not directed to an improvement in the charging station itself; rather, 'othe

problem perceived by the patentee was a lack of a communication network for these charging

stations, which limited the ability to efficiently operate them from a business perspective." Id. at

768 (emphasis added). Again, the mere act of implementing wireless communication for an

otherwise prior-art system was insufficient to render the claims non-abstract. Id. at 770.

Thus, under Alice step one, all of the claims of the'184 patent are directed to the abstract

idea of wirelessly communicating guest information so that it may be logged at a central server.

B. Step 2: The '184 patent claims do not contain significantly more than the abstract

idea and therefore recite no inventive concept.

Step two of the Alice frarnework requires assessment of "whether the claim limitations

other than the invention's use of the ineligible concept to which it was directed were welll4

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understood, routine, and conventional." BSG Tech LLC v. Buyseasons, lnc.,899 F.3d 1281,1290

(Fed. Cir. 2018) (emphasis added). "[T]he relevant inquiry is not whether the claimed invention

as a whole is unconventional or non-routine," but whether the claims recite "significantly more"

than the abstract ideaitself. Id.

The claims of the '184 patent recite no limitations that are "significantly more" than the

abstract idea of wirelessly communicating guest information so that it may be logged at a central

server. After parsing out the abstract idea itself, the claims merely recite admittedly prior art

communication protocols (i.e., BLE and NFC), and basic, unimproved hardware (e.g., "interface

devicesr" "sensorsr" "access panelsr" "radiosr" "transceiversr" "electronically controlled door

locks," etc.). Neither the specification nor the SAC describes anything inventive about these

additional features, either in isolation or in combination. To the contrary, the purported invention

of the'184 patent is not an improvement to wireless technology, but instead "relies on recent

li.e., pre-existingf improvements in low power wireless communication technologies and

distributed sensor networks." (See SAC, Ex. A, ECF 27,'184 Patent at l:44-49). The

specification goes on to teach that the invention merely uses "conventional" networking

technologi es (id. at 39:9-12,38:55-67) and protocols (such as BLE). (Id. at 6:12-15,15:30-35)

Carnival provides a laundry list of alleged unconventional "sensor network" features that

it claims are "specifically recited in the claims, including in how the claims recite the structure

and operation of the portable devices and sensor network." (SAC fl1T53, 59) However, neither the

specification nor the claims purport to identify anything novel about the "sensors," "access

panels," "transceivers," "electronically controlled door locks," or "vending terminals." Rather,

these limitations are recited as generic components for implementing the abstract idea of

wirelessly communicating guest information. See Alice, 573 U.S. at 223-224 ("Given the

ubiquity of computers, wholly generic computer implementation is not generally the sort of

additional feature that provides any practical assurance that the process is more than a drafting

effort designed to monopolize the abstract idea itself."). Carnival alleges that the "sensors" may

transmit signals to allow the portable devices to switch between a beacon and bi-directional

mode. (SAC fl74). But, as discussed above, there is nothing new or novel about beacons or bidirectional communications, and the claims lack the specificity to impart anything inventive to

the selective "mode" feature. Finally, Camival notes how claim 11 requires the portable device

to comprise two separate communication "antennas." (SAC ''lTfl 59, 79-80) But, these separate

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antennas do no more than implement the communication protocols that the patent (at 6:12-15,

15:30-35), as well as the SAC (at fl 56), admit were known in the prior art.

The situation here is similar to that in ChargePoint. There, the court rejected the

argument that the claims resulted in an improved "demand response," because the patent

specification described this demand response approach as already existing for prior-art, albeit unnetworked, car charging stations.920 F.3d at 774. Likewise, here the '184 patent describes the

"invention" as merely the implementation of prior human-to-human guest engagement

techniques using pre-existing communication systems and networks. ('184 patent at l:20-52)

The court in ChargePoint also affirmed the grant of a 12(b)(6) motion-and rejected the

patentee's efforts to manufacture a factual dispute-where the complaint failed to allege any

solution to a technological problem solved by specific, non-abstracf features of the claims

themselves . 920 F.3d at 774. For all of these reasons, the '184 patent claims also fail aI step 2

and are-ineligible, and the Court should dismiss the fourth claim for relief in its entirety.

IV. Alternatively Carnival fails to plausibly allege direct infringement of the'L84 patent

and the Court should dismiss at least the direct infringement theory from Count IV.

At a minimum, the Court should dismiss Count IV insofar as it alleges a direct

infringement theory for the'184 patent. Previously, Carnival alleged only that DeCurtis was

liable for indirect infringement of the '184 patent. The SAC, however, now alleges that the'184

patent is directly infringed by DeCurtis, as well as its customers. (SAC'1T131) As shown below,

Carnival fails to plausibly allege direct infringement, requiring dismissal of this theory.

A direct infringer under 35 U.S.C. $ 271(a) must "make," "use," "sell," or "offer for sale"

the invention as a whole. Because the claims of the '184 patent are system claims, DeCurtis

cannot be liable for merely providing components of the accused system. Rather, "making" an

accused system requires the alleged direct infringer to manufacture or combine all of the claim

elements. Centillion Data Sys., LLC v. Qwest Commc'ns Int'\, lnc.,631 F.3d 1279, 1288 (Fed.

Cir.20Il) ("Qwest does not "make" the patented invention under $ 271(a) as a matter of law.")

Similarly, "use" of a claimed system occurs only by the party that "put[]s the claimed invention

into service, i.e., controlfs] the system and obtainfs] benefit from it." Id. at 1286-87; see also

Intellectual ventures I LLC v. Motorola Mobility LLC,870 F.3d 1320, 1329 (Fed. Cir.2017).

Here, the SAC admits that the accused "guest engagement system" is installed on thirdparty ships outside of DeCurtis' control (e.g., Virgin Voyages). (SAC fl138) The SAC fails,

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Case 1:20-cv-22945-RNS Document 95 Entered on FLSD Docket 11/04/2020 Page 17 of 22
however, to make any allegation that DeCurtis actually "makes," "uses," "sells," or "offers for

sale" the entire system that exists on these third-party ships. Instead, the SAC's entire direct

infringement theory for the '184 patent appears to be premised on the following allegation:

DeCurtis has contracted with its customers, including Virgin and NCL, to provide

and maintain systems that infringe the '184 Patent. DeCurtis has made, used,

offered for sale, and sold systems in the United States that infringe the '184 Patent.

(SAC at t1l50) This is primarily legal boilerplate, which is insufficient to plausibly allege a direct

infringement theory. At most, Carnival alleges that DeCurtis provides mere components of the

accused system. Camival does not allege that DeCurtis provides the accused system as a whole.

Nor does Carnival plausibly allege that DeCurtis assembles the accused system or puts it into

service. Carnival's vague reference to DeCurtis' contractual relationships cannot salvage this

claim. The SAC is devoid of any facts pertaining to any contractual relationship, much less facts

to establish that DeCurtis "makes," oouses," "sells," or "offers for sale," the accused systems as a

whole. Accordingly, the '184 patent direct infringement theory fails as a matter of law.

V. Carnival fails to plausibly allege infringement of either the '184 patent or the '514

patent under 35 U.S.C. $ 271(f).

Counts IV and VI of the SAC also apparently include new theories of infringement of the

' 1 84 patent and the ' 514 patent under 35 U.S.C. $ 271(f). For example paragraph 153 alleges:

DeCurtis also has infringed by supplying or causing to be supplied in or from the

United States the components of the '184 Infringing Systems identified in Paragraph

157, which are uncombined in whole or in part, intending and actively inducing the

combination of such components outside the United States in a manner that would

infringe the patent if such combination occurred within the United States.

(SAC tf153; id. nlSs (same for the '514 patent)) Carnival fails to plausibly allege these theories

of infringement, necessitating dismissal from Counts [V and VI. Section 271(D provides:

(1) Whoever without authority supplies or causes to be supplied in or from the

United States all or a substantial portion of the components of a patented

invention, where such components are uncombined in whole or in part, in

such manner as to actively induce the combination of such components

outside of the United States in a manner that would infringe the patent if such

combination occurred within the United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the

United States any component of a patented invention that is especially made

or especially adapted for use in the invention and not a staple article or

commodity of commerce suitable for substantial noninfringing use, where

such component is uncombined in whole or in part, knowing that such

component is so made or adapted and intending that such component will be

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Case 1:20-cv-22945-RNS Document 95 Entered on FLSD Docket 11/04/2020 Page 18 of 22
combined outside of the United States in a manner that would infringe the

patent if such combination occurred within the United States, shall be liable as

an infringer.

For $ 27|(f)(l), the Supreme Court has clarified that software "detached from an activating

medium" is "uncombinable" and is therefore not a "component" that can give rise to liability.

Microsoft Corp. v. AT&T Corp.,550 U.S. 437, 449 (2007); see also Cardiac Pacemakers, Inc. v.

St. Jude Med., Inc., 576 F.3d 1348, 136l-62 (Fed. Cir. 2009). Additionally, because the statute

requires the supply of "all or a substantial portion of the components of a patented invention,"

liability cannot be established where an alleged infringer supplies only a single component of a

multicomponent invention. Life Techs. Corp. v. Promega Corp.,137 S. Ct.734,741 (2017).

For the '184 patent, Carnival vaguely alleges that the components of the accused system

that DeCurtis provides "include hardware andlor software in the sensors described above,

hardware andlor software comprising the central server describe [sic] above, and hardware

andlor software comprising the portable guest devices described above." (SAC 11152) Carnival

does not describe specifically what components DeCurtis provides, or how exactly they are

combined abroad to form an infringing system. To the extent Carnival relies on DeCurtis' mere

supply of software, or a single hardware component, these allegations cannot create liability

under $ 271(0(1) under the Supreme Court's holdings in Microsoft and Life Techs. Additionally,

Carnival does not even attempt to allege that any of the purportedly supplied components are

"especially made or especially adapted for use in the invention" or that they are "not . . . suitable

for substantial noninfringing use," as is required for a theory under 5 27I(f)(2). Without further

specificity, Camival's $ 271(0 theory for the '184 patent must fail.

Carnival's $ 271(0 theory for the '5l4patent is even more deficient. Asserted claim 11

of the '514 patent is directed to "a portable wireless device." Carnival alleges that this claim is

satisfied, for example, by a device used on Virgin's ships called "the Band."(SAC 1]fl178-182)

Carnival alleges that DeCurtis "creat[ed] 'The Band' and its associated systems" and that "The

Band and its associated systems use technology sourced from DeCurtis." (SAC fl95) But, if

DeCurtis provides "the Band" (i.u., the entire "portable wireless device") as the SAC alleges,

then there is no "component" that is provided for combination abroad as $ 271(f) requires. Not

only does Carnival not allege the supply of a component for combination, its own allegations

suggest that no such combination is actually made. Accordingly, the S 21I(D theory against the

'514 patent lacks plausibility, and must be dismissed.

18

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VI. The Court should dismiss Count V for failure to adequately plead indirect

infringement of the '516 patent under S$ 271(b) and (c).

The fifth claim for relief is limited to allegations that DeCurtis indirectly infringes the

'516 patent. (SAC fl,l] 163, 167,168, ECF 88) But, the SAC fails to plausibly allege either

inducement or contributory infringement, and this count must be dismissed.

A. Carnival fails to plausibly allege induced infringement.

Induced infringement requires that the defendant "knowingly induced infringement and

possessed specific intent to encourage another's infringement." Enplas Display Device Corp. v.

Seoul Semiconductor Co.,909 F.3d 398,407 (Fed. Cir. 20lS) (quotation omitted); see also

Global-Tech Appliances, Inc. v. SEB 5.A.,563 U.S. 754, 766 (2011) ("[I]nduced infringement

under $ 271(b) requires knowledge that the induced acts constitute patent infringement.").

At the pleading stage, a patentee must meet the "demanding" standard of alleging facts

"plausibly showing that the defendant specifically intended litsl customers to infringe the

patent[]." CyWee Grp. Ltd. v. HTC Corp., 312 F. Supp. 3d 914, 978 (W.D. Wash. 2018)

(quotation, citation, and alteration omitted). Conclusory allegations regarding specific intent will

not suffice and warrant dismissal. Brandywine Comms. Techs., LLC v. T-Mobile USA, lnc.,904

F. Supp. 2d 1260, 1269-70 (M.D. Fla. 2012); (Jniversal City Studios v. Nissim Corp.,2015 WL

1124704, at *5-6 (S.D. Fla. March 12, 2015). Although marketing, instructional, and training

materials can sometimes demonstrate the requisite specific intent, courts have required that such

materials "advocate for 'use in an infringing manner' for the court to reasonably infer specific

intent." CyWee,3l2 F. Supp. 3d at 979; see also Google LLC v. Princeps Interface Technologies

LLC, 2020 WL 14783 52, *4-5 (N.D. Cal. 2020) ("[G]eneral and imprecise references to

'instructional materials andlor services related to the Accused Instrumentalities"' were

insufficient to survive a motion to dismiss); Memory Integrity, LLC v. Intel Corp.,144 F. Supp.

3d 1185, 1195 (D. Or. 2015) ("Where defendants have not touted the benefits of the accused

products in ways that track the asserted patents, courts generally do not infer specific intent.");

Twentieth Century Fox Home Enter. LLC v. Nissim Corp.,2015 WL 3465838, at *2 (S.D. Fla.

June 1, 2015) ("Examples of active steps that encourage direct infringement include advertising

an infringing use or instructing on how to engage in an infringing use.")'

Here, Camival fails to allege sufficient facts to raise a plausible inference that DeCurtis

induced infringement with specific intent. In paragraph 168, Carnival vaguely references

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Case 1:20-cv-22945-RNS Document 95 Entered on FLSD Docket 11/04/2020 Page 20 of 22
"documentation," including "marketing," "instructional," and "training" material. (SAC fll68,

ECF SS) But, these allegations fail to plausibly show that DeCurtis instructed any customer to

take any specific steps that would map against the claim limitations and therefore result in

infringement. Without more, such vague and imprecise references to unspecified marketing,

training, and support materials are insufficient under cases like CyWee, Google, and Memory

Integrity. As such, the induced infringement allegations fail and should be dismissed.

B. Carnival fails to plausibly allege contributory infringement.

The contributory infringement allegations also fail. Contributory infringement occurs

where a party provides a component of a patented article that is (1) "a material part of the

invention"; (2) known to be "especially made or especially adapted for use in an infringement of

[the] patent"; and (3) not "a staple article or commodity of commerce suitable for substantial

noninfringing use." 35 U.S.C. $ 271(c). "To state a claim for contributory infringement, [] a

plaintiff must, among other things, plead facts that allow an inference that the components sold

or offered for sale have no substantial non-infringing uses." In re Bill of Lading Transmission

and Processing Sys. Patent Litig.,681 F.3d 1323,1337 (Fed. Cir.2012) (emphasis added).

Here, Carnival claims that DeCurtis contributes to the direct infringement by Virgin by

providing components that result in an infringing article on Virgin's cruise ships. (SAC flfll67-

168) This requires a close analysis of what DeCurtis is alleged to provide Virgin relative to the

'516 patent claims. Exemplary claim 13 of the '516 patent requires an 'oelectronic door lock

assembly" comprising: (1) "a latch assembly"; (2) "a door lock communication module"; and

(3) "an access panel" capable of wirelessly communicating with a "portable user device" and a

"reservation server." But, Carnival does not allege that DeCurtis provides Virgin with any of

these components. The only allegation in the SAC regarding DeCurtis providing a component

with "no substantial non-infringing use" is paragraph 167, which vaguely asserts that DeCurtis

supplies "hardware andlor software in the access panel and reservation seryer." These allegations

fail for a lack of specificity regarding the allegedly supplied components. See Brandywine,904

F. Supp. 2d at I27l-72. Carnival's vague allegations regarding some unspecified 'ohardware

andlor software in the access panel and reservation server" are insufficient, requiring dismissal.

CONCLUSION

, DeCurtis respectfully requests that the Court dismiss Carnival's second amended

complaint with prejudice, as well as award any other relief that is just and proper.

20

Case 1:20-cv-22945-RNS Document 95 Entered on FLSD Docket 11/04/2020 Page 21 of 22
Dated:November 4,2020

David C. Gustman (pro hac vice)

Jeffery M. Cross (pro hac vice)

Jill C. Anderson (pro hac vice)

Jennifer L.FiIzgerald (pro hac vice)

Freebom & Peters LLP

311 S. Wacker Drive, Suite 3000

Chicago, IL 60606

Tel. (312) 360-6000

DECURTIS LLC & DECURTIS

CORPORATION

B Incnn P ,ltpnrn.g

One of their attorneys

Scott L. Watson (pro hac vice)

Justin C. Griffin (pro hac vice)

Patrick T. Schmidt (pro hac vice)

Quinn Emanuel Urquhart & Sullivan LLP

865 S. Figueroa St., 1Oth Floor

Los Angeles, CA 90017

Tel. (213) 443-3000

Jason Steams

Florida Bar No. 059550

Freebom & Peters LLP

201 N. Franklin Street

Suite 3550

Tampa, FL33602

Tel. (813) 488-2920

E-mail: jstearns@freeborn.com

Attorneys for DeCurtis LLC & DeCurtis

Corporation

CERTIFICATE OF SERVICE

I hereby certify that on November 4, 2020,I filed the foregoing DeCurtis's Motion to

Dismiss Second Amended Complaint for Failure to State a Claim ("Motion") via CM/ECF

which will serve all attorneys of record.

DECURTIS LLC & DECURTIS

CORPORATION

B /c/ Incnn P

One of their attorneys

2l

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