i

IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

HUMAN DIFFERENTIAL INTELLIGENCE 

LLC, 

Plaintiff, 

v. 

BED BATH & BEYOND, INC., 

Defendant. 

Civil Action No: 6:20-cv-00310-ADA 

PATENT CASE 

JURY TRIAL DEMANDED 

DEFENDANT BED BATH & BEYOND, INC.’S RENEWED MOTION TO DISMISS 

FOR FAILURE TO STATE A CLAIM UNDER FED. R. CIV. P. 12(B)(6) 

 

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TABLE OF CONTENTS 

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

II. STATEMENT OF FACTS ................................................................................................. 2

A. The Patents-in-Suit and CAPTCHA ....................................................................... 2

B. HDI’s Amended Infringement Allegations ............................................................. 4

III. LEGAL STANDARD ......................................................................................................... 6

A. Motion to Dismiss ................................................................................................... 6

B. Direct Infringement ................................................................................................. 6

C. Indirect Infringement .............................................................................................. 8

IV. ARGUMENT ...................................................................................................................... 9

A. The Amended Complaint Fails to State a Claim for Direct Infringement .............. 9

B. The Amended Complaint Fails to State a Claim for Indirect Infringement ......... 15

V. CONCLUSION ................................................................................................................. 16

 

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TABLE OF AUTHORITIES 

Cases Page(s) 

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

797 F.3d 1020 (Fed. Cir. 2015) (en banc) ...................................................................6, 7, 9, 14 

Ashcroft v. Iqbal, 

556 U.S. 662 (2009) ...................................................................................................................6 

Bell Atl. Corp. v. Twombly, 

550 U.S. 544 (2007) ...................................................................................................................6 

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

No. LA CV:18-03035-JAK(AGRx), 2018 WL 6430539 (C.D. Cal. Aug. 20, 2018) ..14, 15, 16 

Deep9 Corp. v. Barnes & Noble, Inc., 

No. C11-0035JLR, 2012 WL 4336726 (W.D. Wash. Sep. 21, 2012) .....................................12 

Desenberg v. Google, Inc., 

392 F. App’x 868 (Fed. Cir. 2010) ................................................................................9, 12, 13 

Dynacore Holdings Corp. v. U.S. Philips Corp., 

363 F.3d 1263 (Fed. Cir. 2004)............................................................................................8, 15 

Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 

845 F.3d 1357 (Fed. Cir. 2017)..................................................................................................8 

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

563 U.S. 754 (2011) ...................................................................................................................9 

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

134 S. Ct. 2111 (2014) .........................................................................................................8, 15 

LLC v. Infosync Servs., LLC, 

No. 3:10-CV-1994-D, 2014 WL 4988287 (N.D. Tex. Oct. 7, 2014) ........................................7 

Lyda v. CBS Corp., 

838 F.3d 1331 (Fed. Cir. 2016)............................................................................................7, 11 

Nalco Co. v. Chem-Mod, LLC, 

883 F.3d 1337 (Fed. Cir. 2018)..................................................................................................8 

R+L Carriers, Inc. v. Drivertech LLC (In re Bill of Lading Transmission & Processing Sys. 

Patent Litig.), 

681 F.3d 1323 (Fed. Cir. 2012)..................................................................................................8 

Randall D. Wolcott, M.D., P.A. v. Sebelius, 

635 F.3d 757 (5th Cir. 2011) ...................................................................................................10 

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Renhcol Inc. v. Don Best Sports, 

548 F. Supp. 2d 356 (E.D. Tex. 2008) .......................................................................................6 

U.S. ex rel. Riley v. St. Luke's Episcopal Hosp., 

355 F.3d 370 (5th Cir. 2004) ...................................................................................................14 

State Nat'l Ins. Co. v. Access Gen. Agency, Inc., 

No. 1:04-CV-2594-JTC, 2006 WL 8432786 (N.D. Ga. Apr. 13, 2006) ..................................12 

Victaulic Co. v. Tieman, 

499 F.3d 227 (3d Cir. 2007).......................................................................................................6 

Statutes 

35 U.S.C. § 271(a) .......................................................................................................................6, 7 

35 U.S.C. § 271(b) ...........................................................................................................................8 

35 U.S.C. § 271(c) ...........................................................................................................................8 

Other Authorities 

Fed. R. Civ. P. 12(b)(6)................................................................................................1, 6, 9, 10, 16 

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I. INTRODUCTION 

Human Differential Intelligence LLC’s (“HDI”) filed this lawsuit on April 22, 2020, 

accusing Defendant Bed Bath & Beyond, Inc. (“BBB”) of direct and indirect infringement of U.S. 

Patent Nos. 8,752,141 (the “’141 Patent”) and 9,192,861 (the “’861 Patent” and collectively, the 

“Patents-in-Suit”). See Dkt. 1 (the “Complaint”). HDI’s Complaint accused BBB of infringing the 

Patents-in-Suit by virtue of using Google’s reCAPTCHA v2 framework (“reCAPTCHA 

framework”) on its websites. Id. 

BBB filed a motion to dismiss for failing to plausibly allege direct or indirect infringement 

of the Patents-in-Suit as BBB clearly did not and could not “direct or control” Google’s 

reCAPTCHA service. See generally Dkt. No. 9. In response, HDI filed an amended complaint 

seeking to overcome its pleading deficiencies by alleging that BBB purportedly “directs and 

controls” Google’s actions because it “obtains an individualized API key pair [that] invoke[s], 

implement[s], and operate[s] the reCAPTCHA service on Defendant’s website(s) or mobile 

application.” Dkt. No. 13 (the “Amended Complaint”) at ¶¶ 17-19. 

BBB again respectfully requests that this Court dismiss all claims in HDI’s Amended 

Complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil procedure for failure to state a 

claim upon which relief can be granted. The Amended Complaint still fails to plausibly allege 

direct or indirect infringement of the Patents-in-Suit. While BBB implements Google’s 

reCAPTCHA v2 framework on the accused website, the Amended Complaint does not allege what 

claim steps are performed by BBB and what steps are performed by Google, such that Google’s 

performance is attributable to BBB. Moreover, the mere use by BBB of a Google API is 

insufficient to constitute “direction and control” or a “joint enterprise” as required for joint 

infringement. Id. Absent direct infringement, there can be no indirect infringement of the Patentsin-Suit. 

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II. STATEMENT OF FACTS 

A. The Patents-in-Suit and CAPTCHA 

The Patents-in-Suit relate to methods of implementing CAPTCHA technology. CAPTCHA 

is an acronym for “Completely Automated Public test to Tell Computers and Humans Apart” and 

is commonly used by computer systems to tell humans and computers apart, and is often used to 

protect websites from spam and abuse. ’141 Patent at 1:43-45. The Amended Complaint provides 

an example of a CAPTCHA used on BBB’s website: 

 

Amd. Comp. at ¶ 20. 

The ’141 Patent is directed at an image-based CAPTCHA that progressively reveals 

information from an image over time so as to differentiate between human and non-human users, 

as illustrated below in Claim 1:1

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

Turing Test To Tell Humans And Computers Apart (CAPTCHA) system

comprising: 

 

1

 The ’141 Patent, entitled “Methods for Presenting and Determining the Efficacy of Progressive 

Pictorial and Motion-Based Captchas,” issued on June 10, 2014, from an application filed on 

June 29, 2009. The ’141 Patent claims priority to an application filed on June 27, 2008. 

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a. automatically electing an electronic image for a participant 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. 

See ’141 Patent, claim 1 (emphasis added). 

The ’861 similarly recites a method of CAPTCHA.2

 Here, however, users are not presented 

with images to identify, but rather are shown “a manipulation challenge” involving “instructions” 

they must follow. The method then “determin[es] 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”, as illustrated below in Claim 1:

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. 

 

2

 The ’861 Patent, entitled “Motion, Orientation, and Touch-Based Captchas,” is a divisional of 

the ’141 Patent, was filed on March 24, 2014, and issued on November 24, 2015. The ’861 

Patent claims priority to the same application filed on June 27, 2008. 

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’861 Patent, claim 1 (emphasis added). 

B. HDI’s Amended Infringement Allegations 

HDI’s Amended Complaint contains 59 additional paragraphs as compared to the original 

Complaint. However, none of these allegations address the original Complaint’s shortcomings. 

For example, 14 of the 59 “new” paragraphs consist of HDI’s preliminary infringement claim 

charts. Id. at ¶¶ 22-35. Another 23 paragraphs are dedicated to expounding on the claim that, 

because “Defendant operates and/or is responsible for the operation of the reCAPTCHA v2 . . . [it 

therefore] controls and instructs the operation of the reCAPTCHA v2 service on Defendant’s 

website(s).” Id. at ¶¶ 17-19 (emphasis added); see also ¶¶ 36-55. HDI also makes allegations in 

two “new” paragraphs that Google was made aware of the ’141 Patent and that certain Googleowned patents or patent application cite to it. Id. at ¶¶ 58-59. The remaining “new” paragraphs 

consist of expanding the two generalized counts of infringement in the Original Complaint into six 

individualized allegations of direct and indirect infringement in the Amended Complaint. Id. at ¶¶ 

60-92. 

Indeed, HDI’s Amended Complaint relies on the same basic facts presented in the original 

Complaint. For example, like the original Complaint, HDI’s Amended Complaint alleges that BBB 

directly and indirectly infringes the asserted claims by “directing customers, end-users, and/or 

other third parties” to BBB’s website to “solve a reCAPTCHA v2 to access certain protected 

resources or content.” Amd. Comp. at ¶¶ 66, 81. HDI’s Amended Complaint also alleges that 

“Defendant implements Google’s reCAPTCHA v2 framework” and that by “register[ing] a 

reCAPTCHA account with Google . . . [BBB] obtains an individualized API key pair.” Id. at ¶¶ 

16, 18. BBB then allegedly implements this “individualized API key . . . into the architecture, 

design, and construction” of its website. Id. at ¶ 19. The Amended Complaint also points to same 

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alleged source code from BBB’s website that was identified in the original Complaint, reproduced 

below. 

Id. at ¶ 16. Yet, it is evident that the reCAPTCHA API “source code” identified by HDI includes 

JavaScript code provided to the end user by Google from www.google.com web servers. Id. 

 None of these “new” allegations alter the analysis. As was the case with the original 

Complaint, HDI’s Amended Complaint continues to allege that unspecified “source code . . . 

directs and controls the electing, associating, presentation, processing, and calculation of 

information related to the graphical/pictorial and/or motion-based CAPTCHA presented to a user 

of Defendant’s website(s).” Id. at ¶ 19. The Amended Complaint continues to mischaracterize 

BBB’s use of “an individualized API key,” distributed by Google and implemented on BBB’s 

website as exerting “direction or control” over Google. Id. at ¶¶ 18-19. And the Amended 

Complaint continues to avoid alleging facts showing that BBB performs each of step of the 

asserted claims or indicate whether or not Google performs any step. 

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III. LEGAL STANDARD 

A. Motion to Dismiss 

Under Rule 12(b)(6), a party may move to dismiss a complaint that fails to state a claim 

upon which relief can be granted. To survive a Rule 12(b)(6) motion, a complaint “must allege 

facts that ‘raise a right to relief above the speculative level on the assumption that the allegations 

in the Amended Complaint are true (even if doubtful in fact).’” Victaulic Co. v. Tieman, 499 F.3d 

227, 234 (3d Cir. 2007) (citation omitted). Although factual allegations are taken as true, legal 

conclusions are given no deference—those matters are left for the court to decide. See Ashcroft v. 

Iqbal, 556 U.S. 662, 678 (2009) (noting the tenet that allegations are taken as true on a motion to 

dismiss “is inapplicable to legal conclusions”). “[W]hen the allegations in a complaint, however 

true, could not raise a claim of entitlement to relief [as a matter of law], this basic deficiency 

should . . . be exposed at the point of minimum expenditure of time and money by the parties and 

the court.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 558 (2007) (internal quotations omitted). 

B. Direct Infringement 

All claims of the Patents-in-Suit are method claims. Direct infringement of a method claim 

under 35 U.S.C. § 271(a) “occurs where all steps of a claimed method are performed by or 

attributable to a single entity.” Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 

1022 (Fed. Cir. 2015) (en banc); see, also, Renhcol Inc. v. Don Best Sports, 548 F. Supp. 2d 356 

(E.D. Tex. 2008) (explaining that the “‘[T]he concept of “use” of a patented method or process is 

fundamentally different from the use of a patented system or device.’”). 

Where more than one entity is involved in performing the steps of a claimed method, the 

Federal Circuit, sitting en banc, explained that an entity may be held responsible for others’ 

performance of method steps in two sets of circumstances: “(1) where that entity directs or controls 

others’ performance, and (2) where the actors form a joint enterprise.” Akamai, 797 F.3d at 1022. 

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Therefore, a claim of joint infringement “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 v. CBS Corp., 

838 F.3d 1331, 1339 (Fed. Cir. 2016) (citing Akamai, 797 F.3d at 1022). 

Courts consider general principles of vicarious liability to determine if a single entity 

directs or controls the acts of another. Akamai, 797 F.3d at 1022. Regarding whether a single actor 

directed or controlled the acts of third parties, the Federal Circuit has held that: (1) “an actor is 

liable for infringement under § 271(a) if it acts through an agent (applying traditional agency 

principles) or contracts with another to perform one or more steps of a claimed method,” and (2) 

“liability under § 271(a) can also be found 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.” Id. at 1023. The existence of a joint 

enterprise for purposes of divided infringement—such that the actors therein are “each liable for 

the steps performed by the other”—requires proof of four elements: “(1) an agreement, express or 

implied, among the members of the group; (2) a common purpose to be carried out by the group; 

(3) a community of pecuniary interest in that purpose, among the members; and (4) an equal right 

to a voice in the direction of the enterprise, which gives an equal right of control.” Id. at 1023. See, 

also, B-50.com, LLC v. Infosync Servs., LLC, No. 3:10-CV-1994-D, 2014 WL 4988287, at *13 

(N.D. Tex. Oct. 7, 2014) (“There is no question that the Federal Circuit follows the ‘control or 

direction’ test, and that this ‘standard is satisfied in situations where the law would traditionally 

hold the accused direct infringer vicariously liable for the acts committed by another party that are 

required to complete performance of a claimed method.’”) 

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C. Indirect Infringement 

Even if an entity does not directly infringe a patent, an entity that “actively induces 

infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). Liability for induced 

infringement under § 271(b) “must be predicated on direct infringement.” Limelight Networks, 

Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2117 (2014). See, e.g., Dynacore Holdings Corp. v. 

U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004) (“Indirect infringement, whether 

inducement to infringe or contributory infringement, can only arise in the presence of direct 

infringement, though the direct infringer is typically someone other than the defendant accused of 

indirect infringement.”). Additionally, “[t]he patentee must also show that the alleged infringer 

possessed the requisite intent to induce infringement,” which “requires that the alleged infringer 

‘knew or should have known his actions would induce actual infringements.’” Eli Lilly & Co. v. 

Teva Parenteral Meds., Inc., 845 F.3d 1357, 1364 (Fed. Cir. 2017) (citing DSU Med. Corp. v. JMS 

Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc in relevant part)). “For an allegation of induced 

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.” Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 

1355 (Fed. Cir. 2018) (alterations in original) (internal quotation marks and citations omitted). 

Contributory infringement occurs if a party sells or offers to sell, a material or apparatus 

for use in practicing a patented process, and that “material or apparatus” is material to practicing 

the invention, has no substantial non-infringing uses, and is known by the party “to be especially 

made or especially adapted for use in an infringement of such patent.” R+L Carriers, Inc. v. 

Drivertech LLC (In re Bill of Lading Transmission & Processing Sys. Patent Litig.), 681 F.3d 

1323, 1337 (Fed. Cir. 2012) (quoting 35 U.S.C. § 271(c)). For contributory infringement, a 

“violator of § 271(c) must know ‘that the combination for which his component was especially 

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designed was both patented and infringing.’” Global-Tech Appliances, Inc. v. Seb S. A., 563 U.S. 

754, 763 (2011) quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S., at 488, 84 

S.Ct. 1526 (emphasis added). 

IV. ARGUMENT 

A. The Amended Complaint Fails to State a Claim for Direct Infringement 

HDI’s Amended Complaint still fails to allege that BBB performs each and every step of 

the claimed method because it cannot do so. See Akamai, 797 F.3d at 1022; Desenberg v. Google, 

Inc., 392 F. App’x 868, 870–71 (Fed. Cir. 2010) (affirming grant of Rule 12(b)(6) motion to 

dismiss for failure to state a claim for infringement of a patented method because the complaint 

failed to allege that the infringer performed all the steps of the claimed method or that the infringer 

directed or controlled the performance by multiple parties of all the steps of the claimed method). 

Nor could it do so. For example, BBB does not “automatically elect[] an electronic image,” 

“assosicat[e] said electronic image with one or more concepts,” “automatically process[] responses 

form the participant . . . to correlate an accuracy of guesses,” “calculat[e] a percentage of 

participants able to decode and accurately guess said one or more concepts within a predetermined 

time,” provide a “manipulation challenge for a user,” or “automatically process[] . . . user 

movements and/or manipulations.” These steps, as Plaintiff concedes, are performed by Google’s 

reCAPTCHA framework, to the extent that they are performed at all. Amd. Comp. at ¶¶ 22, 26, 

28, 30. 

HDI specifically identifies Google as the entity that provides the purportedly infringing 

reCAPTCHA technology and performs the claimed steps, not BBB. See id. at ¶ 22 (“Google and/or 

a Google server(s)/computer(s) . . . perform these steps or portion thereof . . .” (emphasis added)); 

see also id. at ¶ 18 (“Defendant created or registered a reCAPTCHA account with Google . . . 

[and] obtains an individualized API key pair”). And the Amended Complaint shows that only a 

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single line of “source code” is “incorporated” into BBB’s website to activate the Google 

reCAPTCHA framework. Id at ¶ 16. The Amended Complaint further shows that the reCAPTCHA 

API JavaScript code is provided by Google from its www.google.com web servers. Id. at ¶ 22 

(identifying https://developers.google.com/recaptcha/docs/display). But as that documentation 

explains, it is Google that “[a]utomatically render[s] the reCAPTCHA widget” for a website that 

includes the Google “JavaScript resource and the g-recaptcha tag.” 

Exhibit A at 1.3

 Nevertheless, the Amended Complaint claims that by using this Google widget on 

their website, BBB necessarily “directs or controls” Google to perform the claimed steps. 

 

3

 Cited in Amd. Comp. at ¶ 22 (https://developers.google.com/recaptcha/docs/display). The 

Court may consider and take judicial notice of the Google documentation repeatedly referenced 

in and central to the allegations in the Amended Complaint. A court ruling on a Rule 12(b)(6) 

motion may rely on the complaint, documents properly attached to the complaint, or 

incorporated into the complaint by reference, and matters of which a court may take judicial 

notice. Randall D. Wolcott, M.D., P.A. v. Sebelius, 635 F.3d 757, 763 (5th Cir. 2011). That 

documentation is attached to this Motion as Exhibits A-C. 

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To the extent any steps are performed by Google, BBB does not “direct or control” 

Google’s reCAPTCHA framework. Nor are Google’s actions are attributable to BBB. HDI alleges 

that BBB “registered a reCAPTCHA account with Google . . . to obtain[] an individualized API 

key pair,” and the “implementation” of this API key “directs and controls” Google. Amd. Comp. 

at ¶¶ 18-19. But registering for an “API key” for permission from Google to use its product is the 

opposite of exercising direction or control over Google for the performance of each claim step. 

HDI also alleges that BBB “elects which version of reCAPTCHA it wants to implement,” and that 

by implementing Google’s “reCAPTCHA v2 technology” BBB directs and controls the “version” 

and “presentation” of the CAPTCHA on their website. Id. This is conclusory legal argument—

there are no factual allegations of how requesting a particular version of a CAPTCHA on BBB’s 

website “directs and controls” a third party like Google. BBB simply calls on a publicly available 

API with a single line of source code—it does not “direct and control” the entity providing the API 

to take any particular action in response. See Lyda, 838 F.3d 1331, 1340 (affirming grant of motion 

to dismiss where the complaint did allege facts supporting direction or control a third party that 

allegedly performed the infringing steps). Merely declaring that BBB “implements” a version of 

reCAPTCHA technology provided to the user by a third party, and that such technology in turn 

allegedly practices a claimed method, is insufficient to make an allegation of “direction and 

control.” 

The same is true with respect to HDI’s allegations that Google and BBB are “in a 

contractual relationship” with Google’s reCAPTCHA v2 by virtue of BBB’s acceptance of 

Google’s Terms of Service. See Amd. Comp. at ¶ 42. HDI alleges no facts regarding this 

“relationship” that amount to BBB’s direction and control of Google to perform the claimed steps. 

Id. Terms of Service are typically unilateral terms, and a defendant’s acceptance of Terms of 

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Service by using a third party’s API, and nothing more, does not demonstrate a relationship 

sufficient for direction or control of the third party for performance of the patented invention. See, 

e.g. Deep9 Corp. v. Barnes & Noble, Inc., No. C11-0035JLR, 2012 WL 4336726, at *12-13 (W.D. 

Wash. Sep. 21, 2012) (finding that accepting terms of service was insufficient to meet the standard 

for direction or control). Although BBB may “stop, limit, and/or refuse to implement” Google’s 

reCAPTCHA v2, that does not direct or control Google to do anything. Amd. Comp. at ¶ 38. 

Likewise with HDI’s allegations that BBB’s indemnification or liability obligations arising out of 

the Terms of Service convey direction and control. See id. at ¶¶ 43-44. An agreement by BBB to 

indemnify is insufficient to allege that Google is acting as BBB’s agent under the law. Deep9 Corp. 

at *12-13. See, e.g., State Nat'l Ins. Co. v. Access Gen. Agency, Inc., No. 1:04-CV-2594-JTC, 2006 

WL 8432786, at *2 (N.D. Ga. Apr. 13, 2006) (finding that the parties’ indemnity agreement did 

not create an agency relationship). 

Google’s Terms of Service, referenced in the Amended Complaint at Paragraph 42, is a 

typical unilateral agreement that does not convey direction or control to BBB. In fact, they 

expressly contradict HDI’s allegations that BBB has a say in Google’s alleged performance of any 

claim steps, whether that be by contract, agency, or mutual benefit. For example, Google makes 

clear that customers such as BBB “must agree” to their terms in order to use the their reCAPTCHA 

service: 

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Exhibit B.4

 Further, it is Google who sets and enforces limits on its customers’ use of its APIs in 

its sole discretion: 

Exhibit C at 7.5

 And finally, it is Google who unilaterally decides whether to “add or remove 

features and functionalities”, which it does without input from BBB or other customers: 

Id. at 3. The Court is thus not obligated to accept HDI’s conclusory and incorrect interpretations 

of these Terms of Service. When “an allegation is contradicted by the contents of an exhibit 

 

4

 Cited in Amd. Comp. at ¶¶ 42-44 (https://www.google.com/recaptcha/admin/create). 

5

 Cited in Amd. Comp. at ¶¶ 42-44 (https://policies.google.com/terms). 

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attached to the pleading, then indeed the exhibit and not the allegation controls.” U.S. ex rel. Riley 

v. St. Luke's Episcopal Hosp., 355 F.3d 370, 377 (5th Cir. 2004) (citing Simmons v. Peavy-Welsh 

Lumber Co., 113 F.2d 812, 813 (5th Cir. 1940)) 

Nor does BBB’s use of Google technology constitute a “joint enterprise.” HDI alleges that 

the use of Google’s reCAPTCHA results in “benefits” for Google by “training and strengthening” 

Google’s algorithms. Amd. Comp. at ¶¶ 39, 51. This is insufficient to form a joint enterprise. None 

of the four requisite elements of a joint enterprise are met. HDI has not sufficiently alleged facts 

showing: 

 That Google is contractually obligated to provide any functionality to BBB; 

 That Google has a common purpose with BBB in keeping robots from using BBB’s 

website; 

 A common pecuniary benefit from BBB restricting access to its website; or 

 That BBB has a voice in the architecture of Google’s reCAPTCHA framework. 

See Akamai, 797 F.3d 1020, 1023. 

 The Terms of Service expressly relied upon by HDI directly contradicts its allegations that 

BBB has “an equal right to a voice in the direction of the enterprise, which gives an equal right of 

control.” BBB’s mere “right to remove” reCAPTCHA from their website is a misapplication of 

the law. Amd. Comp. at ¶ 52. Removing reCAPTCHA from BBB’s website (or Google refusing 

service to their API) does not constitute having a “voice in the direction” of Google’s reCAPTCHA 

service. 

The same infringement allegations purporting to allege joint infringement by use of 

Google’s reCAPTCHA technology have been dismissed for the same reasons in another District. 

See Confident Techs., Inc. v. Fandango Media, LLC, No. LA CV:18-03035-JAK(AGRx), 2018 

WL 6430539 (C.D. Cal. Aug. 20, 2018). There, plaintiff alleged it had adequately plead 

Case 6:20-cv-00310-ADA Document 18 Filed 08/03/20 Page 18 of 22
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infringement against defendant because the complaint referred to “Defendant’s use of the 

ReCAPTCHA technology through Defendant’s website.” Id. at *4. The court dismissed the 

plaintiff’s complaint on a 12(b)(6) motion because the complaint did not “allege sufficient facts 

with respect to the relationship between Defendant and ReCAPTCHA or the one between 

Defendant and Google.” Id. 

The allegations that were unsuccessful in Fandango are like the allegations in this 

complaint. Here, HDI alleges that Google enjoys benefits such as “using the [reCAPTCHA] 

solutions to digitize text, annotate images, and build machine-learning datasets. . . ” Amd. Comp. 

at ¶ 39. The plaintiff in Fandango similarly alleged that Google “obtains a benefit of data gathered 

for use in machine learning applications.” Confident Techs., 2018 WL 6430539, *4. But that 

allegation was insufficient because “Plaintiff was unable to identify those steps of the claims that 

may be performed by Google”; nor could it explain how the Fandango “establishes the timing and 

performance of such steps.” Id. It was apparent to the district court in Fandango that the allegations 

did not show that Defendant itself performed each step of the claims. Id. Instead, the steps of the 

asserted claims “could be interpreted to refer to an aspect of ReCAPTCHA that is neither operated 

nor performed by” Fandango. Id. Ultimately, the court determined that the Complaint did not plead 

facts sufficient to support the requisite “direction or control” or that the parties formed a “joint 

enterprise.” 

B. The Amended Complaint Fails to State a Claim for Indirect Infringement 

Because it fails to state a claim for direct infringement, HDI also fails to state a claim of 

indirect infringement. Liability for indirect infringement “must be predicated on direct 

infringement,” and as discussed above in Section IV.A., HDI has not sufficiently alleged a claim 

of direct infringement by any entity. Akamai Techs., 134 S. Ct. at 2117; Dynacore Holdings Corp., 

Case 6:20-cv-00310-ADA Document 18 Filed 08/03/20 Page 19 of 22
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363 F.3d 1263, 1272; Confident Techs., 2018 WL 6430539, *4 (dismissing induced infringement 

allegations for failure to plead an instance of direct infringement by joint infringement). 

Assuming that HDI did adequately plead joint infringement by BBB and Google, HDI has 

not pleaded facts to show that BBB induced or contributed to customers’ direct infringement of 

the Patents-in-Suit. HDI simply states, “BBB directs customers and other end-users . . . to visit [its 

website]” and use Google’s reCAPTCHA framework. Amd. Comp. at ¶¶ 14, 16. As discussed 

above, however, while HDI pleads that customers use reCAPTCHA technology, HDI has not 

alleged that any customers’ use of reCAPTCHA technology involves a customer directly 

infringing the patent; i.e., the customer alone performing every step of the asserted method claim. 

The Amended Complaint itself contradicts this, by making allegations that these steps are 

performed instead by some combination of BBB and Google. 

V. CONCLUSION 

For the reasons set forth above, BBB respectfully requests that the Court dismiss this action 

with prejudice pursuant to Federal Rule of Civil Procedure 12(b)(6). HDI has already amended its 

Complaint once and further leave to amend would be futile, as HDI cannot allege with good faith 

any plausible scenario that would amount to infringement by BBB. 

 

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August 3, 2020 

 

FISH & RICHARDSON P.C. 

/s/ Michael R. Ellis 

Neil J. McNabnay 

Texas Bar No. 24002583 

David B. Conrad 

Texas Bar No. 24049042 

Ricardo J. Bonilla 

Texas Bar No. 24082704 

Michael R. Ellis 

Texas Bar No. 24102726 

1717 Main Street, Suite 5000 

Dallas, Texas 75201 

mcnabnay@fr.com 

conrad@fr.com 

rbonilla@fr.com 

ellis@fr.com 

Attorneys for Defendant 

Bed Bath & Beyond, Inc.

 

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CERTIFICATE OF SERVICE 

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on August 3, 2020, to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system.

 /s/ Michael R. Ellis 

 Michael R. Ellis 

Case 6:20-cv-00310-ADA Document 18 Filed 08/03/20 Page 22 of 22