IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

INFOGATION CORPORATION,

Plaintiff,

v.

GOOGLE LLC,

Defendant.

Civil Action No.: 6:20-cv-0366-ADA

Jury Trial Demanded

PLAINTIFF INFOGATION CORPORATION'S OPPOSITION TO DEFENDANT 

GOOGLE LLC'S MOTION TO DISMISS UNDER RULE 12(B)(6)

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 1 of 13
i

TABLE OF CONTENTS

TABLE OF AUTHORITIES ....................................................................................................... ii

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

II. FACTUAL BACKGROUND........................................................................................... 1

III. ARGUMENT..................................................................................................................... 2

A. InfoGation Has Sufficiently Plead its Claim for Direct Infringement................... 2

B. InfoGation Has Pled Indirect Infringement............................................................. 7

C. If the Court Grants Google's Motion, InfoGation Should be Given Leave under 

Rule 15(a)(2) to Amend .............................................................................................. 8

IV. CONCLUSION ................................................................................................................. 9

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 2 of 13
ii

TABLE OF AUTHORITIES

Cases

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

797 F.3d 1020 (Fed. Cir. 2015)................................................................................................... 2

Ashcroft v. Iqbal, 

556 U.S. 662 (2009).................................................................................................................... 8

Biomedical Enters., Inc. v. Solana Surgical, LLC, 

No. 1:14–CV–095–LY, 2014 WL 5684841 (W.D. Tex. Nov. 4, 2014)..................................... 6

Clear with Computers, LLC v. Hyundai Motor America, Inc.,

No. 6:09 CV 479, 2011 WL 2436535 (E.D. Tex. June 14, 2011) .............................................. 6

De la Vega v. Google LLC,

No. W-19-CV-00617-ADA, 2020 WL 3528411 (W.D. Tex. Feb. 11, 2020)............................. 2

Geotag, Inc. v. AT&T Mobility LLC,

No. 3:13–CV–00169–K, 2014 WL 2587626 (N.D. Tex. June 10, 2014)................................... 6

Glory Licensing LLC v. United Airlines, Inc.,

No. 09-CV-5569, 2011 WL 13295205 (E.D.N.Y. Mar. 15, 2011)............................................. 3

Lone Star Ladies Inv. Club v. Schlotzky's Inc., 

238 F.3d 363 (5th Cir. 2001) ...................................................................................................... 8

Mayeaux v. La. Health Serv. & Indem. Co., 

376 F.3d 420 (5th Cir. 2004) ...................................................................................................... 8

MONKEYmedia, Inc. v. Apple, Inc.,

Nos. A–10–CA–319–SS, A–10–CA–533–SS, 

2015 WL 4758489 (W.D. Tex. Aug. 11, 2015).......................................................................... 6

Nalco Co. v. Chem-Mod LLC, 

883 F.3d 1337 (Fed. Cir. 2018)............................................................................................... 1, 4

SanDisk Corp. v. Memorex Prods., Inc., 

415 F.3d 1278 (Fed. Cir. 2005)................................................................................................... 6

WiNet Labs LLC v. Apple Inc.,

No. 5:19-cv-02248-EJD, 2020 WL 409012 (N.D. Cal. Jan. 24, 2020) ...................................... 3

Rules

Fed. R. Civ. P. 12(b)(6)................................................................................................................... 1

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 3 of 13
1

I. INTRODUCTION

InfoGation Corporation ("InfoGation") has plausibly stated a claim for direct infringement 

of Claim 21 of the asserted U.S. 6,292,743 Patent ("the '743 Patent"), a method for providing an 

optimal travel route using real time information from a server of a navigation system. In this case

the method is performed by Google LLC ("Google") using its servers that support its Maps 

Application Programming Interface ("API").

1

 While the claimed navigation system recites the 

term "client," properly construed, that client does not need to do anything for all steps of the claim 

to be met. Google's Motion to Dismiss Under Rule 12(b)(6) ("Motion") thus hinges on the Court 

adopting a construction for the claim that requires action by the recited "client." It is inappropriate 

to construe disputed claim terms at all on a Rule 12(b)(6) motion, especially where, as here, the 

parties' differences cannot be resolved by looking at the plain and ordinary meaning of the terms. 

Nalco Co. v. Chem-Mod LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018) (purpose of motion is to test 

sufficiency of complaint, not to decide merits). It is a fortiori improper to adopt the Defendant's 

proposed construction at this stage. Google's Motion should thus be denied, especially now that a

claim construction hearing has been scheduled for March 12, 2021. Should the Court determine 

that Google's motion has merit, InfoGation requests leave to amend as there is no evidence of 

prejudice, futility, bad faith, or undue delay. 

II. FACTUAL BACKGROUND

The Amended Complaint (D.I. 27) pleads Google as the actor in all the method steps recited 

in Claim 21. (Id., ¶¶ 12-19.) InfoGation asserts that certain Google products and services, 

including those that incorporate Google's Maps API, infringe at least Claim 21 of the '743 Patent. 

1 The original Complaint asserted infringement of Claim 21 and the Complaint was amended to 

remove references to Claim 1. (Motion, p. 1; see also Complaint (D.I. 1), ¶ 12.) Claim 1 and 21 

are very different. 

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 4 of 13
2

(Amended Complaint, ¶ 12.) The Amended Complaint also pleads that Google's Maps API 

provides an optimal route using real-time information generated by a navigation system server. 

(Id., ¶ 13.) The system includes a client (such as a mobile device) and Google's server, coupled to 

a computer network, which can communicate with the client. (Id., ¶ 14.) InfoGation further pleads 

that through the Maps API, Google establishes a wireless connection between the server and the 

client, the Google server receives start and end route designations from the client, and Google

calculates at the server the optimal route based on real-time information and start and end route 

designations. (Id., ¶¶ 15-17) (emphasis added). InfoGation further pleads that Google formats at 

the server the optimal route into a non-proprietary, natural language description, and that Google 

downloads from the server—i.e., transmit from the server to the client—that information in a 

format that enables the mobile device to construct a visual map using a local mapping database 

and display the route using the map on the mobile device screen. (Id., ¶¶ 18-19.) In sum, the 

Amended Complaint explicitly and unambiguously identifies Google as the entity that performs 

all method steps of Claim 21.

III. ARGUMENT

A. InfoGation Has Sufficiently Plead its Claim for Direct Infringement

InfoGation does not dispute that to directly infringe Claim 21, Google must perform or be 

held responsible for performing all steps recited in the claim. (Motion, p. 4 (citing Akamai Techs., 

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

cases cited by Google applying this principle are irrelevant here. (Motion, pp. 4-6.) For instance, 

De la Vega v. Google LLC is not applicable because the plaintiff there specifically alleged that 

there were three actors who were required to perform the claim steps, using terms like "User #1"

and "User #2", only asserting that a single actor performed all the claim elements in a fourth 

amended complaint. No. W-19-CV-00617-ADA, 2020 WL 3528411, at *3-7 (W.D. Tex. Feb. 11, 

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 5 of 13
3

2020). Similarly, in WiNet Labs LLC v. Apple Inc., it was undisputed that the defendant's client, 

i.e., a third party, had to perform a claimed feature of the invention, No. 5:19-cv-02248-EJD, 2020 

WL 409012, at *3-4 (N.D. Cal. Jan. 24, 2020), meaning the defendant could not be charged with 

performing the entire method. Id. Finally, in Glory Licensing LLC v. United Airlines, Inc., the 

complaint's allegations specifically stated that the recited "user" was a customer, and did not 

identify which claims were allegedly infringed. No. 09-CV-5569, 2011 WL 13295205, at *2 

(E.D.N.Y. Mar. 15, 2011). In sum, all the cases relied upon by Google are distinguishable based 

on the allegations there under consideration, and each set of allegations is different from 

InfoGation's allegations here, which objectively and unambiguously identify Google as the sole 

performer of each claimed step. There are no rules or principles from those cases that mandate 

dismissal here, much less dismissal with prejudice.

Just as important, InfoGation's allegations are consistent with the asserted claim. Unlike 

in the cases relied upon by Google, none of the steps of Claim 21 are performed by the "client" or 

the user's mobile device. Nevertheless, Google identifies four steps in Claim 21 as purportedly 

being performed "at least in part" by a "client:"

1. A method for providing an optimal route using real-time information

from a server of a navigation system, the navigation system also comprising a client

and said server coupled to a computer network, said method comprising the steps

of:

establishing a wireless connection with the client;

[1] receiving at the server start and end route designations from the

client;

calculating at the server the optimal route based on real-time information at

the server and said start and end route designations;

formatting at the server the optimal route into a non-proprietary, natural

language description;

[2] downloading from the server said non-proprietary, natural

language description to the client so that the client can [3] reconstruct the

optimal route using a local mapping database and [4] display said optimal

route on a display system coupled to the client.

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 6 of 13
4

(numbers [1], [2], [3], [4] added to identify Googled alleged "client"-performed steps). (Motion, 

p. 2; Amended Complaint, ¶¶ 16, 19.) Google's positions are just wrong. 

Regarding step [1], in paragraph 16 of its Amended Complaint, InfoGation states: "The 

Google server receives start and end route designations from the client." (D.I. 27, ¶ 16.) The claim 

only requires that information be "received," and that receipt occurs at the server operated by 

Google. All paragraph 16 alleges is that the Google server "receives" start and end information—

the transmission of the information is not part of the claim, nor is the entity that performs that 

transmission. To the extent Google contends otherwise, the issue is one of claim construction, 

which is not to be conducted at this stage of the case. Nalco Co. v. Chem-Mod LLC, 883 F.3d 

1337, 1350 (Fed. Cir. 2018).

With respect to step [2], the parties apparently disagree on what the phrase "downloading 

from the server" means. (Motion, p. 6.) InfoGation contends that Google's server sends, i.e.,

transmits, a non-proprietary natural language description to a client. (Amended Complaint, ¶ 19.) 

Google, on the other hand, contends that the claim language "plainly requires" that the client

"download," i.e., pull from the server, that information. (Motion, p. 6.) The dispute centers over 

whether a party can "download" data to another party, or whether a party may only "download"

data from another party. Contrary to Google's assertion, the latter interpretation is not "plainly"

correct. Indeed, Google has cited no evidence that would yield this conclusion, not surprising as 

it is flatly contradicted by the '743 Patent itself. For example, Figure 4 of the '743 Patent includes 

a step (416) labeled "SERVER DOWNLOADS ROUTE TO CLIENT."

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 7 of 13
5

'743 Patent at Fig. 4 (emphasis added); see also id. at 5:26-28 ("The navigation server 114 is used 

to generate and download optimal routing information to the navigation system 102 . . . .") 

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 8 of 13
6

(emphasis added), 8:45-46 ("Next, in step 416, the server downloads the calculated optimal route 

to the navigation computer 204.") (emphasis added). Thus, not only does Google improperly ask 

the Court to resolve claim construction disputes at the pleading stage, but Google asks the Court 

to adopt a claim construction that is contrary to a preferred embodiment, which is "'rarely, if ever 

correct.'" Biomedical Enters., Inc. v. Solana Surgical, LLC, No. 1:14–CV–095–LY, 2014 WL 

5684841, at *7 (W.D. Tex. Nov. 4, 2014) (quoting SanDisk Corp. v. Memorex Prods., Inc., 415 

F.3d 1278, 1285 (Fed. Cir. 2005)).

Finally, steps [3]-[4] are part of the last full step in Claim 21 and must be read in context:

downloading from the server said non-proprietary, natural language description to 

the client so that the client can reconstruct the optimal route using a local mapping 

database and display said optimal route on a display system coupled to the client. 

('743 Patent, Claim 21) (emphasis added). The operative language here is "downloading from the 

server...", discussed above, a step InfoGation alleges to be performed by Google. (D.I. 27, ¶ 19.) 

Once that step is performed, all the claim plainly requires is that the client "can" reconstruct and 

display the optimal route—there is no requirement that the client actually perform any action. 

Courts have repeatedly recognized claims that enable user actions do not require that such actions 

be performed in order for infringement to be found. 

For example, in MONKEYmedia, Inc. v. Apple, Inc., the Court adopted a construction of 

"expansion cue container" that "require[d] only that cues can be inserted into and removed from 

the container, not that the end user must perform the insertion and removal." Nos. A–10–CA–

319–SS, A–10–CA–533–SS, 2015 WL 4758489, at *10 (W.D. Tex. Aug. 11, 2015). Similarly, 

the court in Geotag, Inc. v. AT&T Mobility LLC held that claims that enabled a user to perform 

searches "[did] not actually require a user to then go on to perform any search of those topics." 

No. 3:13–CV–00169–K, 2014 WL 2587626, at *19 (N.D. Tex. June 10, 2014). Finally, in Clear 

with Computers, LLC v. Hyundai Motor America, Inc., the court held that the method step "the 

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 9 of 13
7

system dynamically building a template utilizing the selection device to fill in the template to 

produce the single composite visual output" was met where the defendant's device created the 

"composite visual output" for display on a user device, and that the user device displaying the 

output was not a required step of the claim. No. 6:09 CV 479, 2011 WL 2436535, at *2 (E.D. Tex. 

June 14, 2011).

These cases properly and logically recognize that in method claims, such as Claim 21 here,

that enable a third party to perform an action, the third party's performance or nonperformance of 

that action is irrelevant to infringement. In other words, the "client" in Claim 21 only needs the 

ability to carry out steps [3]-[4], not actually perform them. Again, Google's arguments center 

around the scope of the claim phrases and information yet to be uncovered through discovery or 

the Markman process, and in any case, rely on unsupportable claim construction positions. 

In sum, the question of joint infringement, if it is an issue at all in this case, will be 

determined by the claim construction process, now scheduled to occur in March 2021. Further, 

Google's preliminary claim construction arguments, even if now considered, have no merit. The 

Court should deny Google's Motion.

B. InfoGation Has Pled Indirect Infringement

The sole basis for Google's motion is the assertion that InfoGation cannot identify a single 

entity that directly infringes Claim 21. (Motion, p. 8.) Google's direct infringement argument is 

wrong for the reasons discussed above. Importantly, though, Google has not challenged 

Infogation's substantive allegations of induced and contributory infringement in the Amended 

Complaint. (D.I. 27, ¶¶ 27-30.) Accordingly, Google's motion should be denied as to indirect 

infringement as well.

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 10 of 13
8

C. If the Court Grants Google's Motion, InfoGation Should be Given Leave 

under Rule 15(a)(2) to Amend

Rule 15(a)(2) provides that the Court should grant leave to amend if it finds multiple actors 

are required to directly infringe Claim 21. Mayeaux v. La. Health Serv. & Indem. Co., 376 F.3d 

420, 425 (5th Cir. 2004) (district courts must entertain a presumption in favor of granting parties 

leave to amend). Only where there are findings of "undue delay, bad faith, dilatory motive, 

repeated failures to cure deficiencies, or undue prejudice to the opposing party," may there be 

sufficient basis to deny leave to amend. Id., at 425, 427. Even then, prejudice is the "touchstone"

for denial of leave to amend. Id. (citing Lone Star Ladies Inv. Club v. Schlotzky's Inc., 238 F.3d 

363, 368 (5th Cir. 2001).) No such prejudice is present here. InfoGation has amended its 

Complaint once in response to Google's prior motion to dismiss and the only activities that have 

taken place are service of InfoGation's Preliminary Infringement Contentions and the submission 

of the parties' Scheduling Order (D.I. 35). 

Nor are Google's arguments of futility valid or credible. (Motion, pp. 7-8.) That 

InfoGation did not plead joint infringement after Google's original motion to dismiss (D.I. 22) is 

not an automatic admission of futility. Rather, at best and in fact, it only means InfoGation does

not agree with Google's position, as it obviously opposes the present Motion. Moreover, Google 

cannot claim futility simply because it says it does not direct or control third-party software 

developers that integrate the Google Maps API or third-party end users of "client" devices. (Id.) 

This confuses proof of the allegations with the sufficiency of their pleading. To survive a motion 

to dismiss, all a complaint must do is contain sufficient factual matter that a court must accept as 

true, to state a plausible claim for relief. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (internal 

citations omitted). InfoGation is not precluded from claiming joint infringement by virtue of 

Google's blanket and conclusory denials in its briefing.

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 11 of 13
9

IV. CONCLUSION

InfoGation respectfully requests that the Court deny Google's Motion, or alternatively, 

grant leave to amend if the Court grants the Motion.

Dated: September 8, 2020 Respectfully submitted,

By: /s/ Patricia Y. Ho

Michael C. Smith (SBN 18650410)

Siebman, Forrest, Burg & Smith LLP

113 East Austin Street

Marshall, TX 75670

michaelsmith@siebman.com

Telephone: 903-938-8900

Facsimile: 972-767-4620

Robert R. Brunelli (Admitted pro hac vice)

rbrunelli@sheridanross.com

Patricia Y. Ho (Admitted pro hac vice)

pho@sheridanross.com

Matthew C. Holohan (Admitted pro hac vice)

mholohan@sheridanross.com

SHERIDAN ROSS P.C.

1560 Broadway, Suite 1200

Denver, CO 80202

Telephone: 303-863-9700

Facsimile 303-863-0223

litigation@sheridanross.com 

Attorneys for Plaintiff InfoGation Corporation

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 12 of 13
10

CERTIFICATE OF SERVICE

I hereby certify that on September 8, 2020, I electronically filed the foregoing Plaintiff 

InfoGation Corporation's Opposition to Defendant Google LLC's Motion to Dismiss Under Rule 

12(b)(6) with the Clerk of the Court using the CM/ECF system which will send notification of 

such filing to all counsel of record.

/s/ Patricia Y. Ho

Patricia Y. Ho (Admitted pro hac vice)

pho@sheridanross.com

SHERIDAN ROSS P.C.

1560 Broadway, Suite 1200

Denver, CO 80202

Telephone: 303-863-9700

Facsimile 303-863-0223

litigation@sheridanross.com

Case 6:20-cv-00366-ADA Document 37 Filed 09/08/20 Page 13 of 13