IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a BRAZOS 

LICENSING AND DEVELOPMENT,

Plaintiff,

v.

DELL TECHNOLOGIES INC., DELL INC., 

AND EMC CORPORATION,

Defendants.

Case No. 6:20-cv-00475-ADA

JURY TRIAL DEMANDED

DEFENDANTS’ MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 1 of 23
TABLE OF CONTENTS

Page

i

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

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

A. The ’888 Patent ....................................................................................................... 1

B. Plaintiff’s Infringement Allegations....................................................................... 4

III. LEGAL STANDARD.......................................................................................................5

A. Direct Infringement................................................................................................. 5

B. Induced and Contributory Infringement ................................................................. 6

IV. ARGUMENT....................................................................................................................7

A. Plaintiff Fails to State a Claim for Direct Infringement of the ’888

Patent....................................................................................................................... 7

1. Plaintiff Fails to Allege Actual Performance of the Claimed Method ............ 7

2. Plaintiff’s Untethered Factual Allegations Provide No Basis to Infer

Practice of the Claimed Method...................................................................... 8

B. Plaintiff Fails to State a Claim for Induced and Contributory

Infringement .......................................................................................................... 11

1. Plaintiff’s Indirect Infringement Claims Fail Without Direct

Infringement .................................................................................................. 11

2. Plaintiff Fails to Allege the Requisite Knowledge for Indirect

Infringement .................................................................................................. 11

3. Plaintiff Fails to Allege the Requisite Specific Intent for Induced

Infringement .................................................................................................. 13

4. Plaintiff Fails to Allege the Requisite Lack of Substantial NonInfringing Uses for Contributory Infringement ............................................. 14

V. CONCLUSION ...............................................................................................................15

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 2 of 23
TABLE OF AUTHORITIES

Page(s)

ii

Cases

Addiction & Detoxification Inst. L.L.C. v. Carpenter,

620 F. App’x 934 (Fed. Cir. 2015) ......................................................................................6, 13

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

No. W:13-CV-365, 2014 WL 2892285 (W.D. Tex. May 12, 2014) ...............................6, 7, 13

Aguirre v. Powerchute Sports, LLC,

No. SA-10-CV-0702 XR, 2011 WL 2471299 (W.D. Tex. June 17, 2011) .......................11, 12

Artrip v. Ball Corp.,

735 F. App’x 708 (Fed. Cir. 2018) ..........................................................................................14

Ashcroft v. Iqbal,

556 U.S. 662 (2009)...........................................................................................................5, 6, 8

Atlas IP, LLC v. S. Co.,

No. 17-20273-CIV, 2017 WL 4993378 (S.D. Fla. June 28, 2017)..........................................10

Avocet Sports Tech., Inc. v. Garmin Int’l, Inc.,

C 11–04049 JW, 2012 WL 1030031 (N.D. Cal. Mar. 22, 2012).............................................12

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007)...................................................................................................................5

Bell v. Crawford Indep. Sch. Dist.,

No. 6:19-CV-268-ADA, 2020 WL 5370592 (W.D. Tex. Feb. 13, 2020)..................................9

Brandywine Commc’ns Techs., LLC v. T-Mobile USA, Inc.,

904 F. Supp. 2d 1260 (M.D. Fla. 2012).............................................................................12, 13

Chapterhouse, LLC v. Shopify, Inc.,

No. 2:18-CV-00300-JRG, 2018 WL 6981828 (E.D. Tex. Dec. 11, 2018)................................8

Commil USA, LLC v. Cisco Sys., Inc.,

135 S. Ct. 1920 (2015).........................................................................................................6, 11

Data Engine Techs. LLC v. Google LLC,

906 F.3d 999 (Fed. Cir. 2018)....................................................................................................3

De La Vega v. Microsoft Corp.,

2020 WL 3528411 (W.D. Tex. Feb. 11, 2020)......................................................................6, 8

Dodots Licensing Sols. LLC v. Lenovo Holding Co., Inc.,

No. CV 18-098 (MN), 2018 WL 6629709 (D. Del. Dec. 19, 2018)........................................14

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 3 of 23
TABLE OF AUTHORITIES 

(continued)

Page(s)

iii

DSU Med. Corp. v. JMS Co.,

471 F.3d 1293 (Fed. Cir. 2006)................................................................................................13

Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd.,

909 F.3d 398 (Fed. Cir. 2018)..............................................................................................6, 11

Ericsson, Inc. v. D-Link Sys., Inc.,

773 F.3d 1201 (Fed. Cir. 2014)..................................................................................................8

Finjan, Inc. v. Secure Computing Corp.,

626 F.3d 1197 (Fed. Cir. 2010)..................................................................................................7

Fujitsu Ltd. v. Netgear Inc.,

620 F.3d 1321 (Fed. Cir. 2010)..................................................................................................7

Global-Tech Appliances, Inc. v. SEB S.A.,

563 U.S. 754 (2011)...................................................................................................................6

Hypermedia Navigation LLC v. Google LLC,

No. 18-CV-06137-HSG, 2019 WL 1455336 (N.D. Cal. Apr. 2, 2019)...................................14

Insuremax Ins. Agencies, Inc. v. AEA Ins. Agencies, Inc.,

No. SA-13-CA-317-FB, 2014 WL 12481353 (W.D. Tex. Nov. 6, 2014), 

report and recommendation adopted, 2014 WL 12481354 (W.D. Tex. Dec. 3, 

2014) ..........................................................................................................................................3

Intellectual Ventures I LLC v. Motorola Mobility LLC,

870 F.3d 1320 (Fed. Cir. 2017)............................................................................................6, 11

Joy Techs., Inc. v. Flakt, Inc.,

6 F.3d 770 (Fed. Cir. 1993)........................................................................................................8

Lormand v. US Unwired, Inc.,

565 F.3d 228 (5th Cir. 2009) .....................................................................................................6

Ormco Corp. v. Align Tech., Inc.,

463 F.3d 1299 (Fed. Cir. 2006)..................................................................................................8

Parity Networks, LLC v. Cisco Sys., Inc.,

No. 6:19-CV-00207-ADA, 2019 WL 3940952 (W.D. Tex. July 26, 2019)......................13, 14

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 4 of 23
TABLE OF AUTHORITIES 

(continued)

Page(s)

iv

Parus Holdings Inc. v. Apple Inc.,

No. 6:19-cv-432, Feb. 20, 2020 Text Order GRANTING D.I. 54 (W.D. Tex. 

Feb. 20, 2020) ..........................................................................................................................12

Pilot Energy Sols., L.L.C. v. Oxy USA, Inc.,

No. AU-16-CA-00687-SS, 2018 WL 3014421 (W.D. Tex. Apr. 6, 2018)................................7

Proxyconn Inc. v. Microsoft Corp.,

No. SACV 11-1681-DOC-ANX, 2012 WL 1835680 (C.D. Cal. May 16, 2012)....................13

Redding v. Swanton,

No. 1-16-CV-01153-ADA, 2020 WL 4572696 (W.D. Tex. Aug. 7, 2020) ..............................9

Xpoint Technologies, Inc. v. Microsoft Corp.,

730 F. Supp. 2d 349 (D. Del. 2010).........................................................................................12

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 5 of 23
TABLE OF ABBREVIATIONS

v

Abbreviation Term

’888 patent U.S. Patent No. 7,453,888 

Accused Products Force 10 Networks’ MXL switches

Complaint or 

Compl.

Complaint (D.I. 1).

Defendants Dell Technologies Inc., Dell Inc. and EMC Corporation

Gai U.S. Patent No. 6,678,241

PVST Per-VLAN Spanning Tree 

VLAN Virtual Local Area Networks

VLAN Identifier VLAN ID

WSOU or Plaintiff WSOU Investments, LLC d/b/a Brazos Licensing and 

Development 

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 6 of 23
1

I. INTRODUCTION

Plaintiff has not plausibly alleged—and cannot plausibly allege—infringement in this case, 

under any theory. At the outset, the Complaint does not even allege that the steps of the claimed 

method have ever been performed by anyone, at any time, instead alleging only that the Accused 

Products may be configured in an allegedly infringing manner. That is fatal to the Complaint. 

The direct infringement allegations also fail because they do not allege even potential

performance of several key limitations of the claims, including those relied on to distinguish prior 

art during prosecution. Plaintiff has not alleged, and cannot allege, performance of these 

limitations because the Accused Products simply do not work in the claimed manner. 

The indirect infringement claims fare no better. They are based on knowledge of the patent 

only as of the date of the Complaint, which this Court has repeatedly held is insufficient to sustain 

a claim of indirect infringement. They also completely fail to allege numerous other elements of 

induced and contributory infringement. 

The deficiencies in Plaintiff’s Complaint go far beyond mere failure to plead sufficient 

facts. Not only has Plaintiff failed to even properly allege infringement, but its own allegations

preclude its claim. As such, this case should be dismissed. 

II. BACKGROUND

A. The ’888 Patent

The ’888 patent describes a method of provisioning backbone VLANS by associating 

“backbone VLAN IDs” with “stackable trunk ports.” See ’888 patent, Abstract, 10:1–12. This is 

depicted in Figure 3 (red annotations added):

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 7 of 23
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Plaintiff identifies claim 1, in the Complaint (see Compl. at ¶ 18): 

1. A method of provisioning a backbone Virtual Local Area Network (VLAN) comprising:

a. obtaining at least one backbone VLAN Identifier (ID); 

b. selecting a plurality of backbone VLAN trunks; and 

c. associating each of the backbone VLAN ID with each one of the plurality 

of backbone VLAN trunks by: 

c1. determining a plurality of stackable trunk ports corresponding to the 

plurality of backbone VLAN trunks; and 

c2. associating the backbone VLAN ID with each one of the plurality of 

stackable trunk ports; 

[d.] wherein the selection and association of at least one backbone VLAN ID with 

each one of the corresponding plurality of backbone VLAN trunks is undertaken 

irrespective of one of an in-use and a stand-by designation of each one of the 

plurality of backbone VLAN trunks and each one of the plurality of stackable trunk 

ports. 

’888 patent, Cl. 1 (bracketed reference letter added). 

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 8 of 23
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As shown above, each data switching node may have “trunk ports” that connect to “trunks” 

that exist “between the data switching nodes.” Id., 3:54–56. Data switching nodes may also have 

“access ports” that connect to the edge of the network, such as a computer. Id. Certain algorithms, 

called “spanning tree algorithms,” are used to prevent loops in the backbone VLAN, and result in 

certain trunks (and trunk ports) being designated as “in-use” (shown as solid lines) and other trunks 

(and trunk ports) being designated as “stand-by” (shown as dashed lines). Id., 2:47–55. The patent 

explains that the association of a backbone VLAN ID with a particular trunk port is done 

“regardless of the in-use/stand-by designation thereof resulting from the execution of spanningtree algorithm(s).” Id., 10:9–12. The patent also explains that “backbone VLAN identifiers” are 

“extended VLAN identifiers” that are distinct from standard VLAN IDs and managed by a service 

provider. Id., 8:11–13 (“standard VLAN identifiers may be assigned by/to VLAN customers, 

while extended VLAN identifiers are managed by service providers”); see id., 8:22–27. 

During prosecution, the applicant emphasized and narrowed the requirement that the 

association of VLAN IDs with trunks must be performed “irrespective of . . . an in-use and a standby designation . . . of the plurality of backbone VLAN trunks and . . . of the plurality of stackable 

trunk ports.” Id., Cl. 1. Specifically, the claims were rejected over Gai. See Rosenthal Decl., Ex. 

A (1/8/08 Final Rejection) at 4–5.1

 The examiner explained that Gai disclosed the “irrespective” 

limitation in Figure 5C where “the trunk ports of physical VLANs associated with RED VLAN 

are undertaken irrespective of a one of an in-use or stand-by designation” (id.): 

 

1 On a motion to dismiss, the Court may “consider ‘documents either attached to or incorporated 

in the complaint’ and may ‘take judicial notice of matters of public record’ that are ‘directly 

relevant to the issue at hand.’” Insuremax Ins. Agencies, Inc. v. AEA Ins. Agencies, Inc., No. SA13-CA-317-FB, 2014 WL 12481353, at *8 (W.D. Tex. Nov. 6, 2014), report and recommendation 

adopted, 2014 WL 12481354 (W.D. Tex. Dec. 3, 2014). “Prosecution histories constitute public 

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

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 9 of 23
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(Rosenthal Decl., Ex. B, Gai, Fig. 5C). The applicant distinguished Gai stating that:

[T]he association of a backbone VLAN ID with a corresponding plurality of 

backbone VLAN trunks is carried out without any consideration of whether the 

backbone VLAN trunks are designated as in-use or standby. The backbone VLAN 

trunks may each already have a designation of in-use or standby, but the 

provisioning methods of the present claims ignore those designations when 

associating the backbone VLAN IDs with the backbone VLAN trunks. This is 

completely contrary to the backup method taught by Gai, which during 

association of VLANs with trunks explicitly designates one of the physical 

VLANs associated with a logical VLAN as in-use and explicitly designates one or 

more other physical VLANs associated with the logical VLAN as back-up. 

Rosenthal Decl., Ex. C (6/9/08 Applicant Remarks) at 11 (underlining in original) (bolding and 

italics emphasis added). Thus, the applicant explained that the “irrespective” limitation requires 

not only that all trunk ports (whether in-use or standby) must be associated with backbone VLAN 

IDs, but also that the selection of which VLAN ID is associated with a particular trunk port is done 

without considering whether the trunk port is in-use or standby. See id.

B. Plaintiff’s Infringement Allegations

Plaintiff accuses Defendants of direct infringement of claim 1 of the ’888 patent based on 

allegedly making, using, or selling networking switches, including the Force 10 MXL switches. 

See Compl. at ¶¶ 13, 19. 

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 10 of 23
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Plaintiff’s indirect infringement allegations amount to three sentences that parrot the legal 

elements and two website links that fail to support Plaintiff’s claims. See id. at ¶¶ 20–22. These 

allegations lack any factual basis and fail to even allege that Defendants had knowledge of the 

patent and knowledge of the infringement before Plaintiff filed suit. See id. To make matters 

worse, the two website links that Plaintiff attempts to use to support the induced infringement

claim do not even address the Accused Products. The first website redirects to a website discussing 

Dell’s EqualLogic PS-M4110 Blade Storage product2 (not the Accused Products) and the second 

web address yields a 404 error.3 See id. at ¶ 21.

III. LEGAL STANDARD

A. Direct Infringement 

A complaint should be dismissed under Federal Rule of Civil Procedure 12(b)(6) if it 

“fail[s] to state a claim upon which relief can be granted.” The complaint must include more than 

“a formulaic recitation of the elements of a cause of action.” Bell Atl. Corp. v. Twombly, 550 U.S. 

544, 555 (2007); Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The plaintiff must allege nonconclusory facts that make liability “plausible,” meaning the facts “allow[] the court to draw the 

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

678. “Threadbare recitals of the elements of a cause of action, supported by mere conclusory 

 

2 The Complaint cites http://bladesmadesimple.com/wpcontent/uploads/2017/05/Deploying the 

Dell Force10 MXL on a Cisco Nexus Network v 1 1.pdf which redirects to 

http://www.bladesmadesimple.com/2012/08/deploying-the-dell-equallogic-ps-m4110-bladestorage/ when opened. (last accessed on October 4, 2020). If one copies the cited address into a 

web browser, the website notes that the resource cannot be found. 

3 The Complaint cites https://i.dell.com/sites/csdocuments/Shared-Content_dataSheets_Documents/en/SS804_Dell_ForcelO_MXL.pdf, which generates an error when opened. 

(last accessed on October 4, 2020)

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 11 of 23
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statements, do not suffice.” Id.; see Lormand v. US Unwired, Inc., 565 F.3d 228, 257 (5th Cir. 

2009) (“The complaint (1) on its face (2) must contain enough factual matter (taken as true) (3) to 

raise a reasonable hope or expectation (4) that discovery will reveal relevant evidence of each 

element of a claim.”). For a claim of patent infringement, the complaint must—at a minimum—

plead facts that describe how the allegedly infringing product infringes. See De La Vega v. 

Microsoft Corp., 2020 WL 3528411, at *6–7 (W.D. Tex. Feb. 11, 2020).

B. Induced and Contributory Infringement

To plead indirect infringement, the complaint must first plead direct infringement by a third 

party. See Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320, 1329 (Fed. Cir. 

2017) (“A finding of direct infringement is predicate to any finding of indirect infringement[.]”); 

Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., 909 F.3d 398, 407 (Fed. Cir. 2018)

(same). 

For both induced and contributory infringement, plaintiff must also plead facts to support 

an inference of each defendant’s “knowledge of the patent in suit and knowledge of patent 

infringement.” Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015); see Addiction 

& Detoxification Inst. L.L.C. v. Carpenter, 620 F. App’x 934, 938 (Fed. Cir. 2015). 

For induced infringement, Plaintiff additionally must plead facts showing that each 

defendant “had [a] specific intent to induce the [third party’s] patent infringement.” Affinity Labs 

of Texas, LLC v. Toyota Motor N. Am., No. W:13-CV-365, 2014 WL 2892285, at *2 (W.D. Tex. 

May 12, 2014). The “specific intent” element is “demanding” and requires more than 

“unsubstantiated assertions” or “generalized allegations” as to the intent of the alleged infringer. 

Id. at *7, *21. Specific intent requires more than knowledge of the induced acts; rather, the accused 

infringer must have “knowledge that the induced acts constitute patent infringement.” GlobalTech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011). 

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 12 of 23
7

For contributory infringement, Plaintiff must also plead “that the component has no 

substantial noninfringing uses, and [] that the component is a material part of the 

invention.” Affinity Labs, 2014 WL 2892285, at *8 (citing Fujitsu Ltd. v. Netgear Inc., 620 F.3d 

1321, 1326 (Fed. Cir. 2010)). 

IV. ARGUMENT

A. Plaintiff Fails to State a Claim for Direct Infringement of the ’888 Patent

Plaintiff has not stated, and cannot state, a claim of direct infringement for the ’888 patent 

for two fundamental reasons: (1) Plaintiff wholly fails to even allege that anyone has actually 

performed the claimed method; and (2) Plaintiff’s Complaint lacks any factual basis to allege that 

the Accused Products can perform key claim elements. 

1. Plaintiff Fails to Allege Actual Performance of the Claimed Method

Plaintiff’s Complaint should be dismissed because it does not allege—let alone plausibly 

allege—that anyone has actually performed each and every limitation of Cl. 1 of the ’888 patent. 

Plaintiff alleges only that: (1) “[t]he Accused Products may configure a trunk port so that a 

numbered tag is inserted in each ethernet frame to keep the traffic of different VLANs from 

mixing”; (2) “[t]he Accused Products may configure all the trunk ports participating in VLANs 

when the port is in a standby state”; and (3) “[t]he configured trunk port may be enabled to begin 

forwarding traffic as soon as its link is active.” Compl. at ¶¶ 15, 17 (emphasis added). The law is 

clear: “To infringe a method or process claim, a person must have practiced all steps of the 

claimed method.” Pilot Energy Sols., L.L.C. v. Oxy USA, Inc., No. AU-16-CA-00687-SS, 2018 

WL 3014421, at *3 (W.D. Tex. Apr. 6, 2018) (emphasis added); see also Finjan, Inc. v. Secure 

Computing Corp., 626 F.3d 1197, 1206 (Fed. Cir. 2010) (same). Allegations that a product may

be configured in a certain way do not support an inference that Defendants actually practice the 

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 13 of 23
8

claimed method. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774–75 (Fed. Cir. 1993) (“[A] method 

claim is not directly infringed by the sale of an apparatus even though it is capable of performing 

only the patented method. The sale of the apparatus is not a sale of the method. A method claim 

is directly infringed only by one practicing the patented method.”) (emphasis added); Ormco 

Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) (“Method claims are only 

infringed when the claimed process is performed, not by the sale of an apparatus that is capable of 

infringing use.”); see also Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1221 (Fed. Cir. 2014). 

2. Plaintiff’s Untethered Factual Allegations Provide No Basis to Infer

Practice of the Claimed Method

Plaintiff’s allegations are insufficient to plead direct infringement because they merely 

consist of a number of untethered allegations about potential configurations of the Accused 

Products, followed by conclusory allegations of infringement. See De La Vega, 2020 WL

3528411, at *2 (“Courts ‘are not bound to accept as true a legal conclusion couched as a factual 

allegation.’”) (quoting Iqbal, 556 U.S. at 678); Chapterhouse, LLC v. Shopify, Inc., No. 2:18-CV00300-JRG, 2018 WL 6981828, at *2 (E.D. Tex. Dec. 11, 2018) (holding that conclusory 

statements without accompanying factual allegations are insufficient to pass the Iqbal/Twombly

standard). 

In its disconnected allegations about the Accused Products, the Complaint fails even to 

allege that the Accused Products can—even if properly configured—meet multiple limitations of 

the claims. For example, Plaintiff fails to plausibly assert that a backbone VLAN ID is obtained 

or associated with a selected plurality of backbone VLAN trunks. See ’888 patent, Cl. 1 

(limitations 1a, 1b, and 1c). Plaintiff’s conclusory allegations only generally state that “[t]he 

Accused Products may configure a trunk port so that a numbered tag is inserted in each ethernet 

frame to keep the traffic of different VLANs from mixing.” Compl. at ¶ 15 (emphasis added). 

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9

And there is no allegation that this “numbered tag” is even a VLAN ID, let alone the required

backbone VLAN ID—i.e., an extended VLAN identifier that is managed by a service provider and 

is independent of a standard VLAN ID. See supra § II.A; ’888 patent at 8:22–27. Plaintiff also 

fails to allege that a backbone VLAN ID is associated “with each one of the plurality of backbone 

VLAN trunks by: [] determining a plurality of stackable trunk ports corresponding to the plurality 

of backbone VLAN trunks . . . and . . . associating the” numbered tag with “each one of the plurality 

of stackable trunk ports.” ’888 patent, Cl. 1 (limitations c1 and c2). Instead, Plaintiff asserts only 

that “Accused Products running Per-VLAN Spanning Tree (PVST) configure their trunk ports 

appropriately.” Compl. at ¶ 15. These general conclusory allegations are speculative and plainly 

insufficient. See Redding v. Swanton, No. 1-16-CV-01153-ADA, 2020 WL 4572696, at *4 (W.D. 

Tex. Aug. 7, 2020) (“The Supreme Court is no-nonsense about pleading specificity requirements.

. . . Plaintiffs cannot satisfy the requirement in Iqbal to plead facts rising above the speculative 

level . . . .”); Bell v. Crawford Indep. Sch. Dist., No. 6:19-CV-268-ADA, 2020 WL 5370592, at *5 

(W.D. Tex. Feb. 13, 2020) (dismissing claim for failing to allege “right to relief above the 

speculative level as required by Twombly”). 

Likewise, Plaintiff fails to even allege that the Accused Products can be configured to select 

and associate a “backbone VLAN ID with each one of the corresponding plurality of backbone 

VLAN trunks . . . irrespective of one of an in-use and a stand-by designation of each one of the 

plurality of backbone VLAN trunks and each one of the plurality of stackable trunk ports.” ’888 

patent, Cl. 1 (limitation 1[d]) (emphasis added). Plaintiff’s allegations that “[t]he Accused 

Products may configure all the trunk ports participating in VLANs when the port is in a standby 

state” and that “[t]he configured trunk port may be enabled to begin forwarding traffic as soon as 

its link is active” are not enough to meet this limitation for two reasons. Compl. at ¶ 17. 

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First, Plaintiff’s allegations imply—at most—that both in-use and standby trunk ports are 

provisioned. But the applicant argued that merely provisioning both in-use and standby ports is 

not enough to meet the “irrespective” claim limitation. See supra § II.A. Instead, the claims 

require that the selection of which backbone VLAN ID is associated with a particular trunk port 

be done without consideration of whether the trunk port is in-use or standby. Id. There is no 

allegation whatsoever in the Complaint that the Accused Products assign VLAN IDs without 

consideration to whether a trunk port is in-use or standby. Plaintiff has not made such an allegation 

because it cannot; the Accused Products simply do not work that way.

Second, Plaintiff’s own allegations demonstrate non-infringement. In alleging that “[t]he 

configured trunk port may be enabled to begin forwarding traffic as soon as its link is active,” the 

Complaint relies on the “spanning-tree pvst edge port command.” Compl. at ¶ 17. But Plaintiff’s 

own citation makes clear that this command cannot be used on trunk ports: “The ‘spanning-tree 

pvst edge-port’ command should only be run on ports that will connect to servers or other end 

nodes and never on ports that will connect to other switches.” Id. (emphasis added). The patent 

defines trunk ports to be those that connect switching nodes to each other, and distinguishes them 

from access ports. See ’888 patent, 3:54–56 (“The access ports are connected to access links to 

the customer LANs and the trunk ports are connected to the data transport trunks [] between the 

data switching nodes.”) (numerical figure references omitted). Thus, Plaintiff’s allegations should 

also be dismissed because they contradict the requirement of claim 1 that the provision method be 

performed on “trunk ports” and thus fail to plausibly allege that the Accused Products can be 

configured to meet the “irrespective” limitation. See Atlas IP, LLC v. S. Co., No. 17-20273-CIV, 

2017 WL 4993378, at *8 (S.D. Fla. June 28, 2017) (dismissing complaint where plaintiffs’ own 

allegations contradicted a claim limitation because “[a]s Plaintiff has described the Accused 

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 16 of 23
11

Products, they are either dysfunctional or incapable of practicing the [claim limitation]”).

B. Plaintiff Fails to State a Claim for Induced and Contributory Infringement

Plaintiff’s indirect infringement claims are deficient and should be dismissed. As an initial 

matter, Plaintiff’s failure to plausibly allege direct infringement precludes its claims of induced 

and contributory infringement. Beyond that failing, Plaintiff has failed to plead any knowledge by 

Defendants of the patent, or knowledge by Defendants of alleged infringement, prior to the filing 

of this action. Plaintiff also fails to plead a specific intent to induce infringement. And Plaintiff

has not pled, and cannot plead, that there are no substantial non-infringing uses. Each of these 

failures independently warrants dismissal of Plaintiff’s indirect infringement allegations. 

1. Plaintiff’s Indirect Infringement Claims Fail Without Direct 

Infringement

Plaintiff’s indirect infringement allegations are insufficient as a matter of law as Plaintiff 

fails to plausibly allege direct infringement. See supra § IV.A. It is axiomatic that “[i]n order to 

succeed on a claim of inducement, the patentee must show, first that there has been direct 

infringement . . . .” Enplas, 909 F.3d at 407 (citations omitted); see also Intellectual Ventures, 870 

F.3d at 1329 (“A finding of direct infringement is predicate to any finding of indirect infringement 

. . . .”). As a result, Plaintiff has also failed to adequately plead its claims of induced and 

contributory infringement, and these claims should be dismissed. 

2. Plaintiff Fails to Allege the Requisite Knowledge for Indirect 

Infringement

Plaintiff’s indirect infringement claims fail because they do not plead the required 

“knowledge of the patent in suit and knowledge of patent infringement.” Commil, 135 S. Ct. at

1926. As courts in this District have held, the knowledge requirements for indirect infringement

require pre-suit knowledge. See Aguirre v. Powerchute Sports, LLC, No. SA-10-CV-0702 XR, 

2011 WL 2471299, at *3 (W.D. Tex. June 17, 2011) (holding that reliance “on knowledge of 

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[plaintiff’s] patent after the lawsuit was filed . . . is insufficient to plead the requisite knowledge 

for indirect infringement”). 

Despite this clear requirement, Plaintiff’s sole allegation of knowledge of the patent is a 

conclusory statement that “Defendants have received notice and actual or constructive knowledge 

of the ’888 patent since at least the date of service of this Complaint.” Compl. at ¶ 20 (emphasis 

added).4 This Court has rejected identical allegations of knowledge. For example, in Parus, this 

Court dismissed indirect infringement claims where plaintiff’s only allegation of knowledge of the 

patent was that “Defendant Apple has had knowledge of the ’431 Patent since at least the filing 

of the original complaint.” Parus, No. 6:19-cv-432, at D.I. 28 (Amended Compl.) at ¶ 44

(emphasis added); see id. at Feb. 20, 2020 Text Order GRANTING D.I. 54 (W.D. Tex. Feb. 20, 

2020) (dismissing indirect infringement claims). Like the allegations in Parus, Plaintiff fails to 

allege pre-suit knowledge and thus fails to state a claim for indirect infringement. See id.; Aguirre, 

2011 WL 2471299, at *3; Brandywine Commc’ns Techs., LLC v. T-Mobile USA, Inc., 904 F. Supp. 

2d 1260, 1268–69 (M.D. Fla. 2012) (“Also, because notice of the patent is necessarily provided 

by a complaint, finding that a complaint provides sufficient knowledge for induced infringement 

would vitiate the Supreme Court’s holding in Global–Tech that an allegation of knowledge of the 

patent is required to state a claim for induced infringement.”).

5

 

4 Plaintiff’s allegation of knowledge of infringement is likewise deficient as it alleges such 

knowledge only “[s]ince at least the date of service of this Complaint.” Compl. at ¶ 22; see, e.g., 

Parus Holdings Inc. v. Apple Inc., No. 6:19-cv-432, Feb. 20, 2020 Text Order GRANTING D.I. 

54 (W.D. Tex. Feb. 20, 2020) (dismissing indirect infringement claims where the only allegations 

of knowledge of infringement were that “[b]y the time of trial, Defendant Apple will have known 

and intended (since receiving such notice) that their continued actions would actively induce the 

infringement of the claims of the ’431 Patent” (D.I. 28 (Amended Compl.), ¶ 44)).

5 Other courts similarly have held that “knowledge after filing of the present action is not 

sufficient for pleading the requisite knowledge for indirect infringement.” Xpoint Technologies, 

Inc. v. Microsoft Corp., 730 F. Supp. 2d 349, 357 (D. Del. 2010); Avocet Sports Tech., Inc. v. 

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3. Plaintiff Fails to Allege the Requisite Specific Intent for Induced 

Infringement

Plaintiff also entirely fails to plead specific intent in support of its inducement claim. 

Allegations of specific intent require factual “‘evidence of culpable conduct, directed to 

encouraging another’s infringement, not merely that the inducer had knowledge of the direct 

infringer’s activities.’” Parity Networks, LLC v. Cisco Sys., Inc., No. 6:19-CV-00207-ADA, 2019 

WL 3940952, at *2 (W.D. Tex. July 26, 2019) (quoting DSU Med. Corp. v. JMS Co., 471 F.3d 

1293, 1306 (Fed. Cir. 2006)) (emphasis added). Plaintiff’s allegations of specific intent amount 

to a single conclusory statement that Defendants “actively induced” others to infringe through their 

advertising, promotional materials, and two website citations.6

 See Compl. at ¶ 21. Such 

conclusory allegations fail to present facts that demonstrate: (1) Defendants knew that the alleged 

acts would infringe, and (2) Defendants knew that the promotion of their products would induce 

or encourage others to infringe the Asserted Patent. See Addiction, 620 F. App’x at 938 (“[S]imply 

recit[ing] the legal conclusion that Defendants acted with specific intent” fails to plead “facts that 

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

infringement.”); Affinity Labs, 2014 WL 2892285, at *7, *21 (finding “Plaintiffs generalized 

allegations that Toyota induced others to infringe the Asserted Patents through its marketing and 

sales tactics are [] insufficient”). To support specific intent, Plaintiff must include specific 

 

Garmin Int’l, Inc., C 11–04049 JW, 2012 WL 1030031, at *4 (N.D. Cal. Mar. 22, 2012); 

Proxyconn Inc. v. Microsoft Corp., No. SACV 11-1681-DOC-ANX, 2012 WL 1835680, at *5 

(C.D. Cal. May 16, 2012); Brandywine, 912 F. Supp. 2d at 1345 (“The weight of authority 

addressing the knowledge required for indirect infringement . . . requires a plaintiff to allege that 

defendant had pre-suit knowledge of the patents-in-suit.”).

6 As addressed above, Plaintiff’s cited websites do not even address the Accused Product. See

supra § II.B.

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allegations mapping the advertisement or promotion to the performance of the claimed steps of the 

patent—i.e., “evidence of culpable conduct, direct to encouraging another’s infringement.” Parity, 

2019 WL 3940952, at *2.7

Plaintiff’s inducement claim should be dismissed because the Complaint is entirely silent 

on a key requirement of induced infringement.

4. Plaintiff Fails to Allege the Requisite Lack of Substantial NonInfringing Uses for Contributory Infringement 

Plaintiff’s contributory infringement allegations also fail because Plaintiff did not “‘plead 

facts that allow an inference that the components sold or offered for sale have no substantial noninfringing uses.’” Artrip v. Ball Corp., 735 F. App’x 708, 713 (Fed. Cir. 2018) (citations omitted). 

Plaintiff has pled a lack of substantial non-infringing uses because it and cannot do so. Plaintiff’s 

only allegation on these elements is a conclusory statement that repeats the legal elements. See 

Compl. at ¶ 22. As the Federal Circuit held in Artrip, conclusory allegations are not enough. 735 

F. App’x at 713 (affirming dismissal of a contributory infringement claim where the “complaint 

did not plausibly assert facts to suggest that [Defendant] was aware of the patents or facts to 

suggest that the [Accused Product] it supplied had no substantial noninfringing use”). 

Furthermore, Plaintiff cannot plead facts to support these elements because the Accused Products 

may be configured to not use spanning tree protocols or VLAN tagging at all, both of which are 

central to Plaintiff’s infringement allegations. In fact, both these features are disabled by default.

 

7 See also Hypermedia Navigation LLC v. Google LLC, No. 18-CV-06137-HSG, 2019 WL 

1455336, at *3 (N.D. Cal. Apr. 2, 2019) (“In no way does the complaint detail how an end user 

would infringe Hypermedia’s patents by following instructions in the links provided in the 

complaint.”) (emphasis in original); Dodots Licensing Sols. LLC v. Lenovo Holding Co., Inc., No. 

CV 18-098 (MN), 2018 WL 6629709, at *4 (D. Del. Dec. 19, 2018) (holding mere citations to 

websites were insufficient to plead specific intent). 

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Plaintiff’s failure to raise a plausible inference of no substantial non-infringing uses is fatal to its 

contributory infringement claim, and as such it should be dismissed.

V. CONCLUSION

For the foregoing reasons, Defendants respectfully request that the Court grant their motion 

and dismiss Plaintiff’s Complaint in its entirety for failure to plausibly state a claim for relief, 

without leave to amend. Pursuant to L.R. CV-7(h), Defendants request an oral hearing on the 

foregoing motion.

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Dated: October 5, 2020 By: /s/ Barry K. Shelton

Barry K. Shelton

Texas State Bar No. 24055029

bshelton@sheltoncoburn.com

SHELTON COBURN LLP

311 RR 620, Suite 205

Austin, TX 78734-4775 

Telephone: 512.263.2165

Facsimile: 512.263.2166 

Benjamin Hershkowitz

bhershkowitz@gibsondunn.com

Brian A. Rosenthal

brosenthal@gibsondunn.com 

Allen Kathir

akathir@gibsondunn.com

Kyanna Sabanoglu

ksabanoglu@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue

New York, NY 10166-0193 

Telephone: 212.351.4000

Facsimile: 212.351.4035 

Y. Ernest Hsin

ehsin@gibsondunn.com

Jaysen S. Chung

jschung@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

555 Mission Street, Suite 3000

San Francisco, CA 94105-0921

Telephone: 415.393.8200

Facsimile: 415.393.8306

Ryan K. Iwahashi

riwahashi@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

1881 Page Mill Road

Palo Alto, CA 94304-1211

Telephone: 650.849.5300

Facsimile: 650.849.5333

Attorneys for Defendants

Case 6:20-cv-00475-ADA Document 32 Filed 10/05/20 Page 22 of 23
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CERTIFICATE OF SERVICE

The undersigned certifies that on this 5th day of October 2020, all counsel of record who 

are deemed to have consented to electronic service are being served with a copy of this document 

through the Court’s CM/ECF system under Local Rule CV-5(b)(1). 

/s/ Barry K. Shelton 

Barry K. Shelton

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