IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

HUMAN DIFFERENTIAL

INTELLIGENCE LLC,

Plaintiff,

v.

THE GAP, INC.,

Defendant.

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Case No. 6:20-cv-00307-ADA

THE GAP, INC.’S

MOTION TO DISMISS CORRECTED FIRST AMENDED COMPLAINT

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TABLE OF CONTENTS

Page

I. INTRODUCTION .............................................................................................................. 1

II. FACTUAL BACKGROUND............................................................................................. 2

A. The Asserted Patents............................................................................................... 2

B. Gap’s Alleged Acts................................................................................................. 3

III. ARGUMENT...................................................................................................................... 4

A. The CFAC Does Not Adequately Plead Direct Infringement ................................ 4

1. The CFAC Fails To Plead Direct Infringement Of 

The ’141 Patent Because It Misquotes Google’s Website.......................... 4

2. The CFAC Fails To State A Claim For Direct Infringement 

Of The ’861 Patent Because It Alleges Google Performs Every Step........ 6

a) Joint Infringement Does Not Include A 

Third Party Practicing Every Step Of A Claimed Method ............. 6

b) The CFAC Alleges That Google 

Performs Every Step Of The ’861 Patent Claim............................. 7

3. The CFAC Does Not Plead Joint Infringement Because It 

Does Not Allege Facts Showing Gap Is Liable For Google’s Service ....... 8

a) A Joint Infringement Complaint 

Must Allege Facts Making It Plausible To 

Hold A Defendant Liable For Another Party’s Actions ................. 8

b) The CFAC Fails To Plead Joint Infringement By Contract............ 9

c) The CFAC Fails To Plead Joint Infringement By Agency........... 11

d) The CFAC Fails To Plead Joint Infringement By Conditioning 

Receipt Of A Benefit Or Participation In A Business Activity 

Upon Performance Of Step(s) Of The Patented Method.............. 12

e) The CFAC Fails To Plead 

Joint Infringement By Joint Enterprise ......................................... 14

B. The CFAC Fails To Plead Indirect Infringement ................................................. 15

1. The CFAC Fails To Plead A Predicate Direct Infringement .................... 15

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a) The CFAC Fails To Plead

Direct Infringement Of The ’141 Patent....................................... 16

b) The CFAC Fails To Plead 

Direct Infringement By Gap Website End-Users ......................... 16

2. The CFAC Fails To Plead Induced Infringement 

Because It Does Not Plead Intent Or Knowledge Of Infringement.......... 17

IV. CONCLUSION................................................................................................................. 20

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TABLE OF AUTHORITIES

Page(s)

Cases

Addiction & Detoxification Inst. LLC v. Carpenter,

620 F. App’x 934 (Fed. Cir. 2015) ................................................................................... 19

Affinity Labs of Texas, LLC v. Toyota Motor N. Am., 

No. W:13-CV-365, 2014 WL 2892285 (W.D. Tex. May 12, 2014) ................................ 19

Air Liquide Mexico S. de R.L. de C.V. v. Talleres Willie, Inc.,

No. CV H-14-211, 2015 WL 8763961 (S.D. Tex. Dec. 15, 2015)................................... 14

Akamai Techs., Inc. v. Limelight Networks, Inc.,

797 F.3d 1020 (Fed. Cir. 2015).................................................................................. passim

Ashcroft v. Iqbal,

556 U.S. 662 (2009)............................................................................................................ 4

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007)............................................................................................................ 4

Boynton v. Headwaters, Inc.,

243 F. App’x 610 (Fed. Cir. 2007) ................................................................................... 17

CBA Envtl. Servs., Inc. v. Toll Bros. Inc.,

403 F. Supp. 3d 403 (D.N.J. 2019)................................................................................... 10

Clear With Computers, LLC v. Bergdorf Goodman, Inc.,

2010 WL 3155888 (E.D. Tex. Mar. 29, 2010) ................................................................. 16

Confident Techs., Inc. v. Fandango Media, LLC,

No. LACV1803035JAKAGRX, 2018 WL 6430539 (C.D. Cal. Aug. 20, 2018) ............... 9

Cox v. Bank of Am., N.A.,

No. CV H-16-2624, 2017 WL 1622043 (S.D. Tex. May 2, 2017)..................................... 5

De La Vega v. Microsoft Corp.,

Nos. W-19-CV-00612-ADA, -00617-ADA, 

2020 WL 3528411 (W.D. Tex. Feb. 11, 2020)........................................................... 1, 4, 9

Finjan, Inc. v. Sophos, Inc.,

244 F. Supp. 3d 1016 (N.D. Cal. 2017).............................................................................. 8

Free Stream Media Corp. v. Alphonso Inc.,

No. 17-CV-02107-RS, 2019 WL 4645725 (N.D. Cal. June 3, 2019)............................... 10

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 4 of 27
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Funk v. Stryker Corp.,

631 F.3d 777 (5th Cir. 2011) .............................................................................................. 5

Gharb v. Mitsubishi Elec. Automation, Inc.,

No. 10 C 07204, 2012 WL 1986435 (N.D. Ill. June 4, 2012) .......................................... 19

Google LLC v. Princeps Interface Techs. LLC,

No. 19-CV-06566-EMC, 2020 WL 1478352 (N.D. Cal. Mar. 26, 2020)......................... 19

In re Bill of Lading Transmission,

681 F.3d 1323 (Fed. Cir. 2012)......................................................................................... 16

Lifetime Indus., Inc. v. Trim-Lok, Inc.,

869 F.3d 1372 (Fed. Cir. 2017)......................................................................................... 18

Limelight Networks, Inc. v. Akamai Techs., Inc.,

572 U.S. 915 (2014).......................................................................................................... 15

Lyda v. CBS Corp.,

838 F.3d 1331 (Fed. Cir. 2016).................................................................................. passim

Meyer v. Holley,

537 U.S. 280 (2003).......................................................................................................... 11

Realtime Data, LLC v. Stanley,

721 F. Supp. 2d 538 (E.D. Tex. 2010).............................................................................. 16

Rearden LLC v. Walt Disney Co.,

293 F. Supp. 3d 963 (N.D. Cal. 2018)................................................................................ 8

Secured Mail Sols. LLC v. Universal Wilde, Inc.,

873 F.3d 905 (Fed. Cir. 2017)............................................................................................. 5

Slyce Acquisition Inc. v. Syte - Visual Conception Ltd.,

422 F. Supp. 3d 1191 (W.D. Tex. 2019)............................................................................. 6

Sony Corp. of Am. v. Universal City Studios, Inc.,

464 U.S. 417 (1984)............................................................................................................ 7

Superior Industries, LLC v. Thor Global Enterprises Ltd.,

700 F.3d 1287 (Fed. Cir. 2012)......................................................................................... 18

Two-Way Media Ltd v. Verizon Commc’ns Inc.,

No. CV 14-1212-RGA-MPT, 2015 WL 2375805 (D. Del. May 18, 2015)...................... 10

Uniloc USA, Inc. v. Apple Inc.,

No. C 18-00359 WHA, 2018 WL 2047553 (N.D. Cal. May 2, 2018).............................. 19

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Statutes

35 U.S.C. § 271......................................................................................................................... 8, 10

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Under Federal Rule of Civil Procedure 12(b)(6), defendant The Gap, Inc. (“Gap”), moves

to dismiss the Corrected First Amended Complaint (“CFAC”) (ECF No. 14) filed by plaintiff

Human Differential Intelligence LLC (“HDI”) for failure to plead a claim.

I. INTRODUCTION

Google’s reCAPTCHA v2 service is designed to permit websites to distinguish between

bots and human users. Gap uses that service for its website. HDI’s CFAC fails to state a claim

for direct infringement against Gap because it accuses Google’s reCAPTCHA v2 service of

infringement but does not allege facts showing that Gap is liable for Google’s operation of its

service. While it is not surprising that an apparel company is not responsible for how a

technology company operates its bot-detecting service, this disconnect dooms the CFAC, and the

Court should dismiss it.

The CFAC’s direct infringement claims for both patents should be dismissed because

they fail to state a claim of joint infringement. This doctrine permits finding a defendant liable

for patent infringement when multiple actors participate in infringement, if the alleged infringer

is responsible for the other actor’s performance. Accordingly, a joint infringement complaint

must allege “facts sufficient to allow a reasonable inference that all steps of the claimed method

are performed and either (1) one party exercises the requisite ‘direction or control’ over the

others’ performance or (2) the actors form a joint enterprise such that performance of every step

is attributable to the controlling party.” Lyda v. CBS Corp., 838 F.3d 1331, 1339 (Fed. Cir.

2016); De La Vega v. Microsoft Corp., Nos. W-19-CV-00612-ADA, -00617-ADA, 2020 WL

3528411, at *4 (W.D. Tex. Feb. 11, 2020) (quoting Lyda).

The CFAC accuses Google’s reCAPTCHA v2 service of infringing, but does not allege

facts sufficient to infer that Gap and Google have a contract that controls Google’s service, that

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Google is Gap’s agent, that Gap establishes the manner or timing of Google’s performance of its

service, or that Gap and Google have formed a joint venture.

The CFAC’s claim asserting direct infringement of U.S. Patent No. 8,752,141 (“’141

patent”) also should be dismissed because the CFAC misquotes a Google document to allege

Google performs the asserted claim’s “calculating” step.

The CFAC’s claim asserting direct infringement of U.S. Patent No. 9,192,861 (“’861

patent”) also should be dismissed because the CFAC alleges that Google performs every step of

the patent’s asserted claim, so joint infringement does not apply in that circumstance.

The CFAC’s indirect infringement counts also should be dismissed because the CFAC 

does not include factual allegations of an underlying direct infringement or that Gap intended

and knew about one.

II. FACTUAL BACKGROUND

A. The Asserted Patents

The CFAC asserts the ’141 patent and the ’861 patent. (ECF No. 14 at ¶¶ 10, 11.) It

alleges they are directed to “methods for distinguishing a human from a computer using a

graphical/pictorial and/or motion-based verification or challenge system(s).” (Id. at ¶ 13.) These

types of tests are known generally as “CAPTCHA” (Completely Automated Public Turing Test

to Tell Computers and Humans Apart).

The CFAC asserts claim 1 of the ’141 patent and claim 1 of the ’861 patent, which focus

on back-end methods for providing a CAPTCHA. (Id. at ¶¶ 61, 65, 72, 76, 80, 90.) Claim 1 of

the ’141 patent requires:

1. A method of testing recognition of images for a Completely

Automatic Public Turing Test To Tell Humans And Computers

Apart (CAPTCHA) system comprising:

a. automatically electing an electronic image for a participant

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with a computing system, wherein said electronic image

comprises a set of imagery data other than words, and

wherein said electronic image is configured such that a

subset of said set of imagery data for said electronic image

can be made perceptible in a first image state;

b. associating said electronic image with one or more concepts;

c. presenting said electronic image in said first image state and

progressively revealing information over a first time period

within an interface for said participant using said computing

system;

d. automatically processing responses from the participant with

the computing system to correlate an accuracy of guesses

from said participant for said one or more concepts

associated with said electronic image; and

e. calculating a percentage of participants able to decode and

accurately guess said one or more concepts within a

predetermined time.

(ECF No. 14-1 at 26:18–40.)

Claim 1 of the ’861 patent requires:

1. A method of providing a motion and/or orientation-based

Completely Automatic Public Turing Test To Tell Humans And

Computers Apart (CAPTCHA) challenge on a portable computing

device comprising:

a. automatically electing a manipulation challenge for a user with

the portable computing device, wherein said manipulation

challenge includes a set of physical manipulation instructions

for the portable computing device for the user;

b. automatically processing sensory data associated with user

movements and/or manipulations of the portable computing

device; and

c. automatically determining if said user movements and/or

manipulations from the user meet a required threshold for

satisfying said set of manipulation instructions to qualify

said user as a human.

(ECF No. 14-2 at 26:14–29.)

B. Gap’s Alleged Acts

The CFAC alleges Gap’s website “implements Google’s reCAPTCHA v2 framework.”

(ECF No. 14 at ¶ 16.) A screenshot included in paragraph 16 of the CFAC shows Gap’s website

calls Google’s website, at www.google.com/recaptcha/api.js, to implement Google’s service.

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tile reCAPTCHA images where users select the images associated with a provided concept and

click “verify.” Paragraph 21 describes a checkbox reCAPTCHA where users check a box labeled

“I’m not a robot.”

The CFAC then describes how Gap allegedly infringes the patents by using Google’s

reCAPTCHA v2 service. (Id. ¶¶ 22–29 (’141 patent, claim 1); ¶¶ 30–35 (’861 patent, claim 1).)

III. ARGUMENT

Rule 8 requires complaints to contain “enough facts to state a claim to relief that is

plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial

plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable

inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S.

662, 678 (2009). “Threadbare recitals of the elements of a cause of action, supported by mere

conclusory statements, do not suffice.” Id. Complaints must provide “more than labels and

conclusions, and a formulaic recitation of the elements of a cause of action will not do[.]”

Twombly, 550 U.S. at 555.

A. The CFAC Does Not Adequately Plead Direct Infringement

1. The CFAC Fails To Plead Direct Infringement Of

The ’141 Patent Because It Misquotes Google’s Website

To plead joint infringement, a complaint must plead, in part, “facts sufficient to allow a

reasonable inference that all steps of the claimed method are performed.” Lyda, 838 F.3d at

1339; see also De La Vega, 2020 WL 3528411, at *4. The CFAC’s Count 1 allegations that

Google performs claim 1 of the ’141 patent’s “calculating” step are not plausible because they 

rely on misquoting a Google document.

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Claim 1 of the ’141 patent recites, in part, “calculating a percentage of participants able

to decode and accurately guess said one or more concepts within a predetermined time.” (ECF

No. 14-1 at 26:38–40.)

The CFAC alleges Google performs this “calculating” step when “Google and/or a

Google server(s)/computer(s) tabulates the total number of participants that used reCAPTCHA

v2 on Defendant’s website(s) ‘and the percentage of end-users able to solve the captcha within

the allowable time period.’ See, e.g., https://developers.google.com/recaptcha/docs/faq.” (ECF

No. 14 at ¶ 28.)

The referenced Google reCAPTCHA Frequently Asked Questions webpage,

https://developers.google.com/recaptcha/docs/faq, does not contain the language the CFAC

allegedly quotes.1 Nowhere does this webpage state that Google calculates a “percentage of endusers able to solve the captcha within the allowable time period,” or make any statement that

resembles that quotation. Because the CFAC’s allegations are not included in the document,

Count 1, for direct infringement of the ’141 patent, should be dismissed. See Secured Mail Sols.

LLC v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (“In ruling on a 12(b)(6)

motion, a court need not accept as true allegations that contradict matters properly subject to

judicial notice or by exhibit.”) (internal quotations omitted); Cox v. Bank of Am., N.A., No. CV

H-16-2624, 2017 WL 1622043, at *2 (S.D. Tex. May 2, 2017) (“It is a well settled rule that

when a written instrument contradicts allegations in the complaint to which it is attached, the

1 Gap includes a copy of the Frequently Asked Questions page as Exhibit 1 to the Declaration of 

Raymond Bernal (“Bernal Decl.”), filed herewith. Because the CFAC references this document, 

it must be considered on a motion to dismiss. See, e.g., Funk v. Stryker Corp., 631 F.3d 777, 783 

(5th Cir. 2011) (“When reviewing a motion to dismiss, a district court ‘must consider the 

complaint in its entirety, as well as other sources courts ordinarily examine when ruling on Rule 

12(b)(6) motions to dismiss, in particular, documents incorporated into the complaint by 

reference, and matters of which a court may take judicial notice.’”) (quoting Tellabs, Inc. v. 

Makor Issues & Rights, Ltd., 551 U.S. 308, 322 (2007)).

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exhibit trumps the allegations.”) (citation omitted).

2. The CFAC Fails To State A Claim For Direct Infringement

Of The ’861 Patent Because It Alleges Google Performs Every Step

The CFAC alleges Google performs every step of claim 1 of the ’861 patent. (ECF No. 

14 at ¶¶ 30–35.) So the direct infringement claim fails, because indirect infringement is what 

potentially applies when a patent holder seeks to hold a defendant liable for a third party’s acts.

As this Court has indicated, “a plaintiff may plead [him]self out of court” if he “plead[s]

facts which establish that he cannot prevail on his . . . claim.” Slyce Acquisition Inc. v. Syte -

Visual Conception Ltd., 422 F. Supp. 3d 1191, 1198 (W.D. Tex. 2019), reconsideration denied,

No. W-19-CV-00257-ADA, 2020 WL 278481 (W.D. Tex. Jan. 10, 2020) (citations omitted).

a) Joint Infringement Does Not Include A

Third Party Practicing Every Step Of A Claimed Method

The differences between types of patent infringement demonstrate that the CFAC

attempts to plead a direct infringement claim that does not exist.

Direct infringement under 35 U.S.C. § 271(a) requires all steps of a claimed method be

“performed by or attributable to a single entity,” namely the party accused of direct infringement.

Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc).

Joint infringement (also known as divided infringement) is a type of direct infringement

“[w]here more than one actor is involved in practicing the steps.” Id. (emphasis added); see also

Lyda v. CBS Corp., 838 F.3d 1331, 1338 (Fed. Cir. 2016) (“To prove joint infringement, where

multiple actors are involved in practicing the claim steps, the patent owner must show that the

acts of one party are attributable to the other such that a single entity is responsible for the

infringement.”) (emphasis added). In Akamai, the defendant performed some steps, and the

Federal Circuit considered the standard for determining whether the defendant was responsible

for a third party’s performance of the “remaining” method steps. 797 F.3d at 1025.

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Under indirect infringement, a party is liable for infringement when a third party

practices a patented method, if the party induced or contributed to the third party’s infringement.

35 U.S.C. §§ 271(b),(c); see also Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S.

417, 434–35 (1984) (discussing how these sections of the Patent Act render individuals “liable

for infringement committed by another” person).

b) The CFAC Alleges That Google

Performs Every Step Of The ’861 Patent Claim

The CFAC alleges facts showing that Google performs every step of claim 1 of the ’861

patent. (ECF No. 14 at ¶¶ 30–35.) As a result, the Court should dismiss Count 4, which claims

direct infringement of the ’861 patent.

Claim 1 of the ’861 patent requires performance of three steps: electing a manipulation

challenge for a user, processing the user’s movements associated with that challenge, and

determining if those movements meet a required threshold. (Each step has additional

requirements, as set out in the complete claim language.) (ECF No. 14-2 at 26:14–29.)

While the CFAC alleges summarily for each step of the method that Gap “performs this

step and/or directs Google and/or a Google server(s)/computer(s) to perform this step[],” (ECF

No. 14 at ¶¶ 30, 32, 34), the more specific allegations for each step support only Google

performing the step:

• For the election step, the CFAC alleges that a script from Gap’s website sends a

“request” for Google “to automatically elect a notion-based captcha, in the

manner claimed in the ’861 Patent.” (Id. ¶ 30.)

• The second step is “automatically processing sensory data associated with user

movements and/or manipulations of the portable computer device.” (ECF No. 14-

2 at 26:23–25.) For this step, the CFAC alleges Gap receives data about a user’s

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scroll and other movements, and then passes that data to Google with a “request”

for Google to verify that the user successfully solved the challenge. (ECF No. 14 

at ¶ 32.)

• For the determining step, the CFAC alleges that Gap sets a security preference,

and then sends a “request” to Google, which “causes” Google “to determine if the

end-user’s movements and/or manipulation satisfied the motion-based captcha at

the specified security threshold.” (Id. ¶ 34.)

The CFAC thus alleges that Google performs each claim step. Count 4 must be dismissed

because a claim for direct infringement does not exist unless the defendant itself performs at

least some of the claimed method steps. See, e.g., Finjan, Inc. v. Sophos, Inc., 244 F. Supp. 3d

1016, 1044 (N.D. Cal. 2017) (noting that an attempt to show direct infringement by alleging that

defendant’s customers performed all of the method steps failed, as it was an indirect

infringement claim, rather than a divided direct infringement claim); see also Rearden LLC v.

Walt Disney Co., 293 F. Supp. 3d 963, 973 (N.D. Cal. 2018) (same).

3. The CFAC Does Not Plead Joint Infringement Because It

Does Not Allege Facts Showing Gap Is Liable For Google’s Service

The CFAC does not plead direct infringement of either asserted patent because it does not

allege facts that would support a finding under any of the four recognized joint infringement

theories that Gap should be liable for Google’s operation of its reCAPTCHA v2 service. As a

result, the Court should dismiss Counts 1 and 4 in their entirety for this reason as well.

a) A Joint Infringement Complaint

Must Allege Facts Making It Plausible To

Hold A Defendant Liable For Another Party’s Actions

Joint infringement is an exception to the rule that direct infringement of a method claim

requires the alleged infringer to perform all its steps. Under this exception, multiple actors can

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perform the required method if the alleged infringer either directs or controls the other actor’s

performance or they form a joint enterprise. Akamai, 797 F.3d at 1022; see also, e.g., Confident

Techs., Inc. v. Fandango Media, LLC, No. LACV1803035JAKAGRX, 2018 WL 6430539, at *3

(C.D. Cal. Aug. 20, 2018) (dismissing complaint alleging infringement based on a defendant’s

use of Google’s reCAPTCHA technology that failed to adequately plead joint infringement).

Direction and control can occur under three circumstances: (1) through an agency

relationship; (2) through a contract; or (3) “when an alleged infringer conditions participation in

an activity or receipt of a benefit upon performance of a step or steps of a patented method and

establishes the manner or timing of that performance.” Akamai, 797 F.3d at 1023.

A joint enterprise requires: (1) an agreement among the members of the group; (2) a

common purpose; (3) a community of pecuniary interests; and (4) an equal right to a voice and

control in the direction of the enterprise. Id.

At the pleading stage, “[a] claim of joint infringement thus requires pleading facts

sufficient to allow a reasonable inference that all steps of the claimed method are performed and

either (1) one party exercises the requisite ‘direction or control’ over the others’ performance or

(2) the actors form a joint enterprise such that performance of every step is attributable to the

controlling party.” Lyda, 838 F.3d at 1339; see also, De La Vega, 2020 WL 3528411, at *4.

A complaint cannot merely parrot the words “direction and control.” It must allege facts

that, if proven, would support a finding of direction and control. In Lyda, the Federal Circuit

affirmed the dismissal of a complaint that alleged direction and control “without factual

support,” in a conclusory way. 838 F.3d at 1340.

b) The CFAC Fails To Plead Joint Infringement By Contract

The CFAC alleges Gap and Google have a contract “relating to the implementation and

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use of the reCAPTCHA v2 service” by Gap. (ECF No. 14 at ¶ 42.) The alleged contract,

however, does not mention the service, let alone amount to a contract “to perform one or more

steps of a claimed method.” Akamai, 797 F.3d at 1023.

While joint infringement can result from a contract, not any contract will do. Instead, the

contract must require performance of the asserted patent claim steps. To state a claim for joint

infringement, a contract must control the details of the third party’s work to such an extent the

third party cannot “cannot perform the work as he chooses.” CBA Envtl. Servs., Inc. v. Toll Bros.

Inc., 403 F. Supp. 3d 403, 418 (D.N.J. 2019); see also Free Stream Media Corp. v. Alphonso

Inc., No. 17-CV-02107-RS, 2019 WL 4645725, at *2 (N.D. Cal. June 3, 2019) (finding patent

owner failed to show that third party was “under any contractual obligation to practice any

element of the patent”); Two-Way Media Ltd v. Verizon Commc’ns Inc., No. CV 14-1212-RGAMPT, 2015 WL 2375805, at *6 (D. Del. May 18, 2015) (dismissing joint infringement claim

where contractual relationships did not “not require that the third parties perform the enumerated

steps of the patents-in-suit or confer on defendants the right to supervise and interfere with the

third parties’ work”).

The CFAC alleges Google’s Terms of Service, https://policies.google.com/terms,

2 is the

contract through which Gap directs and controls Google to infringe the asserted patents. (ECF

No. 14 at ¶¶ 42, 45.) However, these terms do not mention Google’s reCAPTCHA v2 service,

and do not require Google to perform the patent claim steps. Instead, they broadly address use of

any Google service (such as its search and map services). (Bernal Decl. Ex. 2.) The only

commitments Google makes are general, such as to provide services “designed to work together”

and to “develop[] new technologies and features to improve our service.” (Id. at 5.)

2 Gap includes a copy of the Terms of Service as Exhibit 2 to the Bernal Decl.

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The CFAC’s allegation that Gap directs and controls Google to practice the asserted

patents through the Google Terms of Service is not a plausible factual allegation. As a result, the

Court should hold the CFAC does not allege joint infringement based on a contract theory.

c) The CFAC Fails To Plead Joint Infringement By Agency

The CFAC alleges Gap and Google have “agency relationships,” but fails to plausibly

allege facts supporting any agency relationship. (ECF No. 14 at ¶ 45.)

For joint infringement based on agency, “traditional agency principles” must serve as the

basis for finding agency. Akamai, 797 F.3d at 1023. Traditional agency principles require, among

other things, “the manifestation of consent by one person to another that the other shall act on his

behalf [], and consent by the other so to act.” Meyer v. Holley, 537 U.S. 280, 286 (2003) (internal 

quotations omitted) (emphasis in original).

The CFAC does not plead facts that plausibly support an agency relationship. It cites the

Google Terms of Service discussed above as demonstrating an agency relationship. Specifically,

it alleges that “Defendant has acknowledged and agreed that Google acts on behalf of Defendant

for purposes of using reCAPTCHA v2 technology on Defendant’s website(s), and that Defendant

is responsible for any unlawful use or infringement of any third party’s intellectual property

rights. See, e.g., https://policies.google.com/terms; https://policies.google.com/terms/archive.”

(ECF No. 14 at ¶ 44.)

However, nothing in the Google Terms of Service suggest Google is Gap’s agent in any

respect, let alone when implementing Google’s reCAPTCHA v2 service. (Bernal Decl. Ex. 2.)

The Terms of Service do not mention Google’s reCAPTCHA v2 service. Further, instead of

assenting to Gap control over Google, the Terms of Service make clear that Google believes it

has the right to operate its services as it sees fit. Other than a handful of vague, high-level

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commitments about trying to improve its services and to give notice about significant changes,

Google explicitly disclaims other commitments, stating: “We don’t make any other commitments

about our services.” (Id. at 12.) Google also imposes “basic rules of conduct” on entities who use

its services, rather than assenting to Gap’s or anyone else’s control. (Id. at 5.)

As the Terms of Service do not mention agency or reCAPTCHA, and indicate that

Google makes limited commitments rather than taking on an agency role, the Court should hold

the CFAC does not allege joint infringement based on an agency theory.

d) The CFAC Fails To Plead Joint Infringement By Conditioning

Receipt Of A Benefit Or Participation In A Business Activity

Upon Performance Of Step(s) Of The Patented Method

The CFAC alleges Gap “directs or controls Google by conditioning receipt of a benefit or

participation in some business activity upon performance of a step or steps of a patented method

and establishes the manner and timing of that performance.” (ECF No. 14 at ¶ 46.) This

allegation tracks one of the four approaches for proving joint infringement, but the CFAC does

not allege facts that make this allegation plausible, as required by Lyda. 838 F.3d at 1339.

The CFAC alleges a variety of benefits,3 but the only benefit it alleges Google receives is

“‘using the [reCAPTCHA] solutions to digitize text, annotate images, and build machinelearning datasets.’ See, e.g., https://support.google.com/recaptcha/?hl-en.” (Id. at ¶ 39 (alteration

in original).) While the CFAC alleges that Google receives this benefit, it fails to allege facts that

make it plausible that (1) Google receives this benefit, (2) that Google receives the benefit as a

result of Gap’s use of the reCAPTCHA v2 service, (3) that Gap conditions Google’s receipt of

3 The benefits allegedly received by Gap and Gap’s end-users or customers (ECF No. 14 at 

¶¶ 40–41) are not relevant to the analysis of whether Gap conditions Google’s receipt of a 

benefit on Google’s performance. 

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that benefit upon performance of patent claim steps, or (4) that Gap establishes the manner or

timing of Google’s performance.

First, the CFAC alleges a Google support page states Google receives a benefit, but that

page says no such thing. (ECF No. 14 at ¶ 39.) The CFAC partially quotes a sentence from that

page, which states in its entirety, “reCAPTCHA also makes positive use of the human effort

spent in solving CAPTCHAs by using the solutions to digitize text, annotate images, and build

machine-learning datasets. This in turn helps preserve books, improve maps, and solve hard AI

problems.” (Bernal Decl. Ex. 3 at 2.) This sentence lists benefits of reCAPTCHA without

identifying who benefits.

Second, the CFAC does not allege facts showing Gap’s participation in the reCAPTCHA

v2 service helps digitize text, annotate images, or build machine-learning datasets. There is no

explanation or allegation about how this occurs.

Third, the CFAC does not allege that Gap conditions Google’s alleged receipt of these

alleged benefits upon Google’s performance of claim steps. For example, with respect to claim 1

of the ’141 patent, the CFAC does not allege that Gap conditions Google’s receipt of the alleged

benefit on Google electing an electronic image that comprises “imagery data other than words,”

or “associating said electronic image with one or more concepts,” or “progressively revealing

information,” or “processing responses . . . to correlate an accuracy of guesses,” or “calculating a

percentage of participants able to decode and accurately guess said one or more concepts within

a predetermined time.” (ECF No. 14-1 at 33.) With respect to claim 1 of the ’861 patent, the

CFAC does not allege that Gap conditions Google’s receipt of the alleged benefit on Google

electing a manipulation challenge that “includes a set of physical manipulation instructions,” or

“automatically processing sensory data associated with user movements and/or manipulations,”

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or “automatically determining if said user movements and/or manipulations from the user meet a

required threshold.” (ECF No. 14-2 at 33.)

Fourth, the CFAC does not allege facts that create a reasonable inference that Gap

establishes the timing or manner of Google’s alleged performance of the claim steps. The

allegations that Gap controls whether reCAPTCHA is used in the first place and that Gap and 

Google use a site and secret key pair to initiate and authorize communications, (ECF No. 14 at ¶¶ 

18, 19), are not sufficient because HDI must allege that Gap controls Google’s performance of

the particular allegedly infringing steps. See Lyda, 838 F.3d at 1340 (explaining that a complaint

“must plausibly allege that Defendants exercise the requisite ‘direction or control’ over the

performance of the claim steps, such that performance of every step is attributable to

Defendants”) (emphasis added). Similarly, the CFAC’s repeated “but for” theory, (see, e.g., ECF

No. 14 at ¶¶ 23, 25, 27, 29, 31, 33, 35), is not sufficient because Akamai sets out a different

causation standard than “but for” causation.

e) The CFAC Fails To Plead

Joint Infringement By Joint Enterprise

The CFAC alleges that Gap and Google are involved in a joint enterprise, but does not

plead facts sufficient to support this legal conclusion. (ECF No. 14 at ¶¶ 48–52.)

The CFAC does not allege facts showing Gap and Google have “a community of

pecuniary interest” in a common purpose, which is required for a joint enterprise. Akamai, 797

F.3d at 1023. A “community of pecuniary interest” requires a monetary interest “common among

the members of the group—it must be one shared without special or distinguishing

characteristics . . . Indirect potential financial interests do not satisfy the test..” Air Liquide

Mexico S. de R.L. de C.V. v. Talleres Willie, Inc., No. CV H-14-211, 2015 WL 8763961, at *4

(S.D. Tex. Dec. 15, 2015) (citation and internal quotations omitted).

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 20 of 27
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Instead of alleging that Gap and Google have common financial interests, the CFAC

alleges they have distinct financial interests. The CFAC alleges Gap “is financially incentivized

to implement and use reCAPTCHA v2 to provide a secure platform to advertise, explain, and/or

offer its products, services, product literature, customer service articles, and/or coupons.” (ECF

No. 14 at ¶ 51.) On the other hand, the CFAC alleges “Google is financially incentivized to have

Defendant implement and use the reCAPTCHA v2 technology in Defendant’s website(s)

because it assists Google in training and strengthening its various algorithms and other data

gathering, which Google uses to improve the products and services it offers and/or sales.” (Id.)

These are separate financial interests, not a common one.

The CFAC also does not allege facts that make plausible the fourth requirement for a

joint enterprise, which is “an equal right to a voice in the direction of the enterprise, which gives

an equal right of control.” Akamai, 797 F.3d at 1023. The CFAC does not allege that Gap has the

right to control Google’s reCAPTCHA v2 service. Instead it alleges just that Gap has the right to

control its own website and also the right not to use the reCAPTCHA v2 service. (ECF No. 14 at 

¶ 52.) The ability to decline to use a service is different than the ability to affect how a service is

performed (e.g., a person can decide not to patronize a restaurant, but that does not give the

person the ability to dictate how the restaurant prepares its signature dish).

B. The CFAC Fails To Plead Indirect Infringement

1. The CFAC Fails To Plead A Predicate Direct Infringement

HDI’s inducing infringement claim for the ’141 patent (Count 2), inducing infringement 

claim for the ’861 patent to the extent based on end-user direct infringement (Count 5), and

contributory infringement claims for both patents (Counts 3 and 6) must be dismissed because

they do not adequately plead an underlying direct infringement. Limelight Networks, Inc. v.

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Akamai Techs., Inc., 572 U.S. 915, 921 (2014) (“[L]iability for inducement must be predicated

on direct infringement.”); In re Bill of Lading Transmission, 681 F.3d 1323, 1333 (Fed. Cir.

2012) (“[T]here can be no inducement or contributory infringement without an underlying act of

direct infringement.”).

To survive a motion to dismiss, a claim for indirect infringement must contain facts

supporting an underlying direct infringement. See, e.g., Realtime Data, LLC v. Stanley, 721 F.

Supp. 2d 538, 544 (E.D. Tex. 2010), report and recommendation adopted; id. at 544 (“[I]ndirect

infringement allegations will not survive a Motion to Dismiss . . . where a plaintiff’s complaint . .

. fails to identify a direct infringer in reference to its indirect infringement claims.”); Clear With

Computers, LLC v. Bergdorf Goodman, Inc., No. 6:09CV481, 2010 WL 3155888, *1–4 (E.D.

Tex. Mar. 29, 2010) (dismissing claim in part on that basis).

a) The CFAC Fails To Plead

Direct Infringement Of The ’141 Patent

The CFAC asserts Gap induces infringement of the ’141 patent based on direct

infringement by Google (it does not allege contributory infringement of either asserted patent

based on direct infringement by Google). (ECF No. 14 at ¶ 65.)

As set out in Section III.A.1, supra, the CFAC does not plausibly plead that Google, or

anyone, performs the “calculating” step of claim 1 of the ’141 patent because the CFAC

misquotes a document as the basis of its allegation that Google performs this step. Without a

plausible allegation that Google practices every step of claim 1 of the ’141 patent, the CFAC’s

Count 2, to the extent based on Google’s direct infringement of that patent, cannot stand.

b) The CFAC Fails To Plead

Direct Infringement By Gap Website End-Users

The CFAC’s Counts 2 and 5 assert that Gap induces infringement of both patents based

on direct infringement by end-users of Gap’s website (in addition to Google), and its Counts 3 

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 22 of 27
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and 6 assert that Gap contributes to infringement of both patents based on direct infringement by

Gap’s “end-users, customers, and/or other third parties” (but not Google). (ECF No. 14 at ¶¶ 65,

66, 73, 80, 81, 91.)

The CFAC does not contain plausible allegations that Gap’s end-users or customers

infringe. Their conduct is barely described, and nowhere correlated with the asserted claim

requirements. Indeed, the claims on their face are not directed at end-users or customers, as they

require back-end procedures for providing a CAPTCHA. For example, claim 1 of the ’141 patent

recites “automatically electing an electronic image for a participant” and “calculating a

percentage of participants,” (ECF No. 14-1 at 33), and claim 1 of the ’861 patent recites

“automatically electing a manipulation challenge for a user” and “automatically processing

sensory data associated with user movements,” (ECF No. 14-2 at 33).

HDI does not allege that Gap’s end-users or customers perform any of the method steps.

HDI alleges that Gap requires its customers “to solve a reCAPTCHA v2” to access resources on

Gap’s website, (ECF No. 14 at ¶¶ 66, 68, 81, 83, 86), but none of the method steps require a

customer to solve a reCAPTCHA. Because the CFAC does not adequately plead an underlying

direct infringement with regard to end-users or customers, its Counts 2 and 5, to the extent based 

on direct infringement by end-users, and its Counts 3 and 6, in their entirety, must be dismissed.

See, e.g., Boynton v. Headwaters, Inc., 243 F. App’x 610, 614–15 (Fed. Cir. 2007) (affirming the

grant of judgment on the pleadings of an induced infringement claim because the alleged direct

infringer underlying that claim could not be a direct infringer).

2. The CFAC Fails To Plead Induced Infringement

Because It Does Not Plead Intent Or Knowledge Of Infringement

The CFAC fails to sufficiently plead Gap had the intent and knowledge of infringement

needed for induced infringement of either patent (Counts 2 and 5). “For an allegation of induced

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 23 of 27
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infringement to survive a motion to dismiss, a complaint must plead facts plausibly showing that

the accused infringer ‘specifically intended [another party] to infringe [the patent] and knew that

the [other party]’s acts constituted infringement.’” Lifetime Indus., Inc. v. Trim-Lok, Inc., 869

F.3d 1372, 1379 (Fed. Cir. 2017) (alterations original) (citation omitted).

The CFAC pleads no facts supporting Gap’s intent or knowledge of infringement, and

instead makes only the following unsupported conclusions: “Such inducements include without

limitation, with specific intent to encourage the infringement, knowingly inducing Google to use

infringing articles and methods that Defendant knows or should know infringe one or more

claims of the [asserted] Patent[s].” (ECF No. 14 at ¶¶ 65, 80; see also id. at ¶¶ 66, 81 (same

allegation with regard to “end-users of Defendant’s accused website(s)”).

The Federal Circuit has repeatedly affirmed the dismissal of such inducement claims. For

example, in Superior Industries, LLC v. Thor Global Enterprises Ltd., the Federal Circuit

affirmed the dismissal of a complaint asserting induced infringement because it did not “allege

any facts to support a reasonable inference that [the accused infringer] specifically intended to

induce infringement of the [asserted] Patent or that it knew it had induced acts that constitute

infringement.” 700 F.3d 1287, 1296 (Fed. Cir. 2012).

Similarly, the Federal Circuit found that a complaint “did not include facts that would

allow a court to reasonably infer that Defendants had the specific intent to induce infringement”

and instead “simply recite[d] the legal conclusion that Defendants acted with specific intent”

when it alleged that, for example, Defendants acted “with specific intent to urge, instruct,

encourage” infringement by “causing[,] urging, aiding, or instructing others to perform one or

more claimed methods of the [asserted] patent,” and that Defendants acted “with specific intent

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 24 of 27
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to induce third parties to infringe the [asserted] patent.” Addiction & Detoxification Inst. LLC v.

Carpenter, 620 F. App’x 934, 935–36, 938 (Fed. Cir. 2015).

As in those cases, here the CFAC alleges in a conclusory fashion that Gap had intent and

knowledge of infringement, but provides no facts in support. See also, e.g., Affinity Labs of

Texas, LLC v. Toyota Motor N. Am., No. W:13-CV-365, 2014 WL 2892285, at *3–8 (W.D. Tex.

May 12, 2014) (dismissing inducement claims that failed to sufficiently allege intent); Google

LLC v. Princeps Interface Techs. LLC, No. 19-CV-06566-EMC, 2020 WL 1478352, at *4–5

(N.D. Cal. Mar. 26, 2020) (same).

HDI may argue that the CFAC provided Gap with “knowledge of infringement,” such

that a claim limited to post-suit damages would be appropriate. But “vague and conclusory

allegations” that do not adequately explain how the accused infringer allegedly induced

infringement—such as HDI’s—do not provide factual support for any reasonable inference that a

defendant possessed “knowledge that the induced acts constitute patent infringement.” Uniloc

USA, Inc. v. Apple Inc., No. C 18-00359 WHA, 2018 WL 2047553, at *4 (N.D. Cal. May 2,

2018); see also, e.g., Gharb v. Mitsubishi Elec. Automation, Inc., No. 10 C 07204, 2012 WL

1986435, at *6 (N.D. Ill. June 4, 2012) (dismissing induced infringement claim that failed to

plead facts showing that an accused infringer had knowledge of infringement, as it was unclear

from the allegations what direct infringement underlay the alleged inducement).

As a result, the Court should dismiss Counts 2 and 5 in their entirety.

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 25 of 27
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IV. CONCLUSION

For the reasons explained above, Gap respectfully requests the Court to dismiss the

CFAC.

August 4, 2020. Respectfully submitted,

/s/ Klaus H. Hamm

Robert T. Cruzen (Admitted Pro Hac Vice)

Oregon State Bar No. 080167

rob.cruzen@klarquist.com

Klaus H. Hamm (Admitted Pro Hac Vice)

Oregon State Bar No. 091730

klaus.hamm@klarquist.com

KLARQUIST SPARKMAN, LLP

121 S.W. Salmon Street, Suite 1600

Portland, OR 97204

Telephone: (503) 595-5300

Fax: (503) 595-5301

Counsel for

THE GAP, INC.

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 26 of 27
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CERTIFICATE OF SERVICE

I hereby certify that on the 4th day of August, 2020, I electronically filed the foregoing

with the Clerk of Court using the CM/ECF system which will send notification of such filing to

the following:

Nicole E. Glauser (nglauser@dinovoprice.com)

Andrew G. DiNovo (nglauser@dinovoprice.com)

DINOVO PRICE LLP

7000 N MoPac Expressway, Suite 350

Austin, TX 78731

/s/ Klaus H. Hamm

Klaus H. Hamm

Case 6:20-cv-00307-ADA Document 17 Filed 08/04/20 Page 27 of 27