IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

PROFECTUS TECHNOLOGY LLC, 

Plaintiff, 

v. 

GOOGLE LLC, 

Defendant. 

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CIVIL ACTION NO. 6:20-cv-00101-ADA 

JURY TRIAL DEMANDED 

DEFENDANT GOOGLE LLC’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF 

LIMITED PRE-SUIT DAMAGES AND NO WILLFUL INFRINGEMENT 

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Defendant Google LLC moves for partial summary judgment on Plaintiff Profectus 

Technology LLC’s claims for (i) damages prior to March 8, 2019, and (ii) willful infringement. 

I. INTRODUCTION 

. To 

recover pre-suit damages under 35 U.S.C. § 287, a plaintiff must show that it either (1) complied 

with the statute’s marking requirement for its own products and those of its licensees, or (2) 

provided the defendant with actual pre-suit notice of infringement of the asserted patent by a 

specific accused product. 

 It was not until March 8, 2019 that Profectus sent Google a 

letter (“March 2019 Letter”), which Profectus alleges provides actual notice of infringement. 

Accordingly, Profectus is not entitled to any damages before the March 8, 2019 date of its letter. 

Profectus is similarly not entitled to a finding of willful infringement. To prove willfulness, 

it is not enough for a patentee to establish that an accused infringer had knowledge of the asserted 

patent. Rather, the patentee must prove a specific intent to infringe, which has been described as 

“wanton, malicious, bad-faith” behavior, or behavior “characteristic of a pirate.” But, before 

sending its March 8, 2019 letter, Profectus never notified Google that its accused Nest Hub 

products allegedly infringed the ’308 Patent, and Google had no reason to believe that those 

products infringed. 

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11. In the March 2019 Letter, Profectus accused the Google Home Hub of infringing 

the ’308 Patent and “invite[d] [Google] to engage in discussions with Profectus regarding the terms 

and conditions of . . . a license” to the patent. Id. at 24, 25. 

 

C. Profectus’s Present Litigation Against Google 

16. Profectus filed this lawsuit on February 10, 2020. Dkt. 1. 

17. The ’308 Patent expired the next day, on February 11, 2020. ’308 Patent at Cover. 

18. Profectus alleges that Google infringes the ’308 Patent based on Google’s smart 

display Nest Hub and Nest Hub Max products. Dkt. 1 ¶¶1, 23, 24. 

19. Google Nest Hub was released first on October 22, 2018, while Google Nest Hub 

Max was released nearly a year later on September 9, 2019. Dkt. 1 ¶38; 

20. Profectus asserts independent claims 1 and 22, and dependent claims 4, 9, 11, and 

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a. before Profectus’s March 8, 2019 Letter, when Profectus did not notify Google 

about any alleged infringement of the ’308 Patent by the accused Google Nest Hub 

products, and Google had no other reason to believe that those products infringed; and 

b. after the March 8, 2019 Letter, 

IV. LEGAL STANDARD 

A movant is entitled to summary judgment if “there is no genuine dispute as to any material 

fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); Celotex 

Corp. v. Catrett, 477 U.S. 317, 322 (1986). Where the nonmovant bears the burden of proof, the 

movant may discharge its burden on summary judgment by showing that there is an absence of 

evidence to support the nonmovant’s case. Celotex, 477 U.S. at 325; Byers v. Dall. Morning News, 

Inc., 209 F.3d 419, 424 (5th. Cir. 2000). 

Once the movant has carried its burden, the nonmovant must “respond to the motion for 

summary judgment by setting forth particular facts indicating there is a genuine issue for trial.” 

Byers, 209 F.3d at 424. The nonmovant must adduce affirmative evidence. Anderson v. Liberty 

Lobby, Inc., 477 U.S. 242, 257 (1986). No “mere denial of material facts nor . . . unsworn 

allegations [nor] arguments and assertions in briefs or legal memoranda” will suffice to carry this 

burden. Moayedi v. Compaq Comput. Corp., 98 F. App’x 335, 338 (5th Cir. 2004). Rather, the 

court requires “significant probative evidence” from the nonmovant in order to dismiss a request 

for summary judgment supported appropriately by the movant. United States v. Lawrence, 276 

F.3d 193, 197 (5th Cir. 2001). 

V. ARGUMENT 

A. Profectus Is Not Entitled To Pre-Suit Damages Before March 8, 2019. 

Under § 287, a patentee whose licensee practices the patent is entitled to damages from the 

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2. Profectus Cannot Meet The Actual Notice Requirement Of § 287 

Before March 8, 2019. 

Profectus cannot show that it provided actual notice to Google of any alleged infringement 

by the Google Nest Hub products before the March 8, 2019 Letter. Under § 287(a), “actual notice 

requires the affirmative communication of a specific charge of infringement by a specific accused 

product or device”; mere notice of the existence of the patent is insufficient. Amsted Indus. Inc. v. 

Buckeye Steel Castings Co., 24 F.3d 178, 186 (Fed. Cir. 1994). 

Profectus admits that the earliest date that Profectus provided Google with actual notice of 

infringement is March 8, 2019, through its letter identifying the ’308 Patent and the Nest Hub 

products as allegedly infringing. Dkt. 1 ¶29. 

 

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* * * 

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B. Profectus Is Not Entitled To A Finding Of Willful Infringement. 

Willful infringement requires more than mere knowledge of the asserted patent. A patentee 

must establish that “the accused infringer had a specific intent to infringe at the time of the 

challenged conduct,” which “has been variously described in . . . cases as willful, wanton, 

malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a 

pirate.” Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 987 (Fed. Cir. 2021) (quoting Halo 

Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016)). Willfulness requires “deliberate 

or intentional infringement,” id. at 988, which Profectus cannot meet its burden to show. 

1. There Can Be No Willful Infringement Before March 8, 2019, Because 

Google Was Not Aware Of Any Alleged Infringement By The Accused 

Products. 

It is undisputed that Profectus did not provide Google with any notice of alleged 

infringement of the ’308 Patent by the accused Nest Hub products before the March 2019 Letter. 

See Section IV.A.2. Accordingly, Profectus cannot show willful infringement before March 8, 

2019, because it cannot identify any legal basis for concluding that Google was even aware of any 

alleged infringement by its Nest Hub products before that date, let alone that Google had any 

specific intent to infringe at that time. 

Profectus alleges that Google became aware of the ’308 Patent as early as May 22, 2012, 

when it acquired Motorola during the pendency of the Motorola Mobility lawsuit. Dkt. 1 ¶¶14, 

28. 

 

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 But mere knowledge of the patent alone is insufficient as a matter of 

law to establish willfulness. Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1332 (Fed. Cir. 2004). 

Indeed, courts regularly deny willful infringement claims when they are based only on knowledge 

of a patent, without any awareness of infringement: 

• In Norian, the Federal Circuit affirmed dismissal of willful infringement when plaintiff 

never met its burden of presenting threshold evidence of culpable behavior despite the 

accused infringer stipulating that it had knowledge of asserted patents. Id. The district 

court summarized evidence of culpable behavior that was lacking: “No evidence of 

copying was presented. . . . No evidence was presented as to whether or not [defendant] 

had acted reasonably once it acquired knowledge of the patent.” Id. at 1332-33. 

• In Sprint Communications Co. v. Atlantic Broadband Finance LLC, the court granted 

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court reasoned, even if “Google failed to properly investigate whether its products infringed,” that 

“is too far a stretch to convert the [pre-suit] [l]etter into a basis for willful infringement.” Id.

 See

Bayer, 989 F.3d at 988 (affirming JMOL of no willfulness when evidence presented to jury merely 

demonstrates knowledge of the patent and direct infringement, but not conduct rising to the level 

of “wanton, malicious, and bad-faith behavior” or “deliberate or intentional infringement” as 

required for willfulness). 

* * * 

Because Google had no awareness of alleged infringement of the ’308 Patent by its accused 

Google Nest Hub products before March 8, 2019, 

Google is entitled to summary judgment of no willfulness both before and after March 8, 2019. 

VI. CONCLUSION 

Google respectfully requests this Court to grant summary judgment that: (i) Profectus is 

not entitled to pre-suit damages for the period before March 8, 2019, and (ii) Profectus is not 

entitled to a finding of willful infringement. 

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Dated: August 24, 2021 Respectfully submitted, 

By /s/ Marc J. Pensabene 

Steve McConnico 

Texas State Bar No. 13450300 

Paige Arnette Amstutz 

Texas State Bar No. 00796136 

SCOTT, DOUGLASS & MCCONNICO, LLP 

303 Colorado Street, Suite 2400 

Austin, TX 78701 

Telephone: (512) 495-6300 

Facsimile: (512) 495-6399 

smcconnico@scottdoug.com 

pamstutz@scottdoug.com 

Darin W. Snyder (Pro Hac Vice)

dsnyder@omm.com 

Luann L. Simmons (Pro Hac Vice) 

lsimmons@omm.com 

Mark Liang (Pro Hac Vice)

mliang@omm.com 

Daniel Silverman (Pro Hac Vice)

dsilverman@omm.com 

O’MELVENY & MYERS LLP 

Two Embarcadero Center, 28th Floor 

San Francisco, California 94111-3823 

Tel: (415) 984-8700 

Fax: (415) 984-8701 

Marc J. Pensabene (Pro Hac Vice) 

mpensabene@omm.com 

O’MELVENY & MYERS LLP 

Times Square Tower 

7 Times Square 

New York, NY 10036 

Tel: (212) 326-2000 

Fax: (212) 326-2061 

Stacy P. Yae (Pro Hac Vice) 

syae@omm.com 

O’MELVENY & MYERS LLP 

400 South Hope Street, 18th Floor 

Los Angeles, CA 90071-2899 

Tel: (213) 430-6000 

Fax: (213) 430-6407 

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Eugene Y. Mar 

Winston Liaw 

Daniel C. Callaway (Pro Hac Vice) 

Stephanie Skaff (Pro Hac Vice) 

FARELLA BRAUN + MARTEL, LLP 

235 Montgomery Street, 18th Floor 

San Francisco, CA 94104 

Telephone: (415) 954-4400 

Facsimile: (415) 954-4480 

emar@fbm.com 

wliaw@fbm.com 

dcallaway@fbm.com 

sskaff@fbm.com 

Attorneys for Defendant Google LLC 

 

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CERTIFICATE OF SERVICE 

Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify 

that, on August 24, 2021, all counsel of record who have appeared in this case are being served 

with a copy of the foregoing via the Court’s CM/ECF system. 

Dated: August 24, 2021 /s/ Michael O’Donnell 

 Michael O’Donnell 

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