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-00473-ADA

JURY TRIAL DEMANDED

DEFENDANTS’ MOTION TO DISMISS FIRST AMENDED COMPLAINT

FOR FAILURE TO STATE A CLAIM

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 1 of 24
TABLE OF CONTENTS

Page

i

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

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

A. The ’144 Patent....................................................................................................... 2

B. The Accused Product .............................................................................................. 4

C. Plaintiff’s Infringement Allegations....................................................................... 5

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

IV. ARGUMENT....................................................................................................................8

A. Plaintiff Fails to Identify the Claimed “V mod N” Formula, and 

Instead Accuses Functionality That was Distinguished During 

Prosecution.............................................................................................................. 8

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

Infringement.......................................................................................................... 10

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 .................................................................................................. 14

4. Plaintiff Fails to Allege the Requisite Lack of Substantial NonInfringing Uses for Contributory Infringement............................................. 15

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

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TABLE OF AUTHORITIES

Page(s)

ii

Cases

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

620 F. App’x 934 (Fed. Cir. 2015) ......................................................................................7, 14

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

No. W:13-CV-365, 2014 WL 2892285 (W.D. Tex. May 12, 2014) ...............................7, 8, 14

Aguirre v. Powerchute Sports, LLC,

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

Amgen Inc. v. Coherus BioSciences Inc.,

931 F.3d 1154 (Fed. Cir. 2019)................................................................................................10

Artrip v. Ball Corp.,

735 F. App’x 708 (Fed. Cir. 2018) ......................................................................................6, 15

Ashcroft v. Iqbal,

556 U.S. 662 (2009).........................................................................................................6, 8, 10

Auto–Dril, Inc. v. Nat'l Oilwell Varco, L.P.,

6:15–CV–00091, 2015 WL 12868183, at *2 (W.D. Tex. June 24, 2015)...............................10

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007)...............................................................................................................6, 8

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

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

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

135 S. Ct. 1920 (2015).........................................................................................................7, 11

Data Engine Techs. LLC v. Google LLC,

906 F.3d 999 (Fed. Cir. 2018)..................................................................................................10

De La Vega v. Microsoft Corp.,

2020 WL 3528411 (W.D. Tex. Feb. 11, 2020)......................................................................7, 8

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

No. CV 18-098 (MN), 2018 WL 6629709 (D. Del. Dec. 19, 2018)........................................15

DSU Med. Corp. v. JMS Co.,

471 F.3d 1293 (Fed. Cir. 2006)................................................................................................14

Dynamic Data Techs., LLC v. Amlogic Holdings Ltd.,

C.A. No. 19-1239-CFC, 2020 WL 4365809 (D. Del. July 30, 2020)......................................12

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 3 of 24
TABLE OF AUTHORITIES 

(continued)

Page(s)

iii

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

909 F.3d 398 (Fed. Cir. 2018)..............................................................................................7, 11

Fujitsu Ltd. v. Netgear Inc.,

620 F.3d 1321 (Fed. Cir. 2010)..................................................................................................8

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

563 U.S. 754 (2011)...................................................................................................................7

Hypermedia Navigation LLC v. Google LLC,

No. 18-CV-06137-HSG, 2019 WL 1455336 (N.D. Cal. Apr. 2, 2019)...................................15

Intellectual Ventures I LLC v. Motorola Mobility LLC,

870 F.3d 1320 (Fed. Cir. 2017)............................................................................................7, 11

Lormand v. US Unwired, Inc.,

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

Lovelace v. Software Spectrum Inc.,

78 F.3d 1015 (5th Cir. 1996) ...................................................................................................10

Metricolor LLC v. L’Oreal S.A.,

791 F. Appx. 183 (Fed. Cir. 2019)...........................................................................................10

Orlando Commc’ns LLC v. LG Elecs., Inc.,

No. 6:14-CV-1017-ORL-22, 2015 WL 1246500 (M.D. Fla. Mar. 16, 2015)..........................13

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

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

Parus Holdings Inc. v. Apple Inc.

No. 6:19-cv-432 (W.D. Tex. Feb. 20, 2020)......................................................................12, 13

Proxyconn Inc. v. Microsoft Corp.,

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

Simplivity Corp. v. Springpath, Inc.,

No. CV 4:15-13345-TSH, 2016 WL 5388951 (D. Mass. July 15, 2016)................................13

VLSI Tech. LLC v. Intel Corp.,

C.A. No. 18-966-CFC, 2019 WL 1349468 (D. Del. Mar. 26, 2019).......................................12

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(continued)

Page(s)

iv

Statutes

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

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

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 5 of 24
TABLE OF ABBREVIATIONS

v

Abbreviation Term

’144 Patent U.S. Patent No. 9,137,144 

Accused Product(s) Dell SmartFabric OS and others not named in the Complaint

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

ECMP Equal Cost Multi-Path

VLAN Virtual Local Area Network

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

Development

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1

I. INTRODUCTION

Plaintiff’s Amended Complaint suffers from exactly the same fatal deficiencies as its 

Original Complaint. Plaintiff has not plausibly alleged—and cannot plausibly allege—

infringement in this case. The ’144 Patent claims selection of a path by a specifically recited

mathematical formula. The patentee emphasized this specific formula during prosecution to 

distinguish prior art that instead disclosed using a hash function to select the path. Plaintiff does 

not identify any use of the recited formula, and instead accuses exactly the same type of hash 

function that was distinguished during prosecution. It is thus unsurprising that Plaintiff fails to 

allege that the accused product selects a path using the formula explicitly required by every claim 

of the ’144 Patent, and further fails to provide any facts upon which this limitation could be met. 

Defendants identified exactly this deficiency with the Original Complaint, yet the Amended 

Complaint continues to allege infringement based on exactly the same functionality. Plaintiff’s 

Amended Complaint demonstrates non-infringement on its face, and should be dismissed.

Plaintiff’s indirect allegations also remain fatally deficient for several reasons. The original 

complaint relied entirely on post-Complaint knowledge of the patent, which is legally insufficient 

to satisfy pleading standards in this District. The Amended Complaint tries—and fails—to 

circumvent that clear rule by alleging knowledge based on a complaint Plaintiff earlier filed and 

dismissed before filing the present case. Neither basis is sufficient; Plaintiff still has not adequately 

alleged pre-suit knowledge of the patent. Plaintiff’s indirect infringement allegations also fail to 

plead specific intent for induced infringement and that there are no non-infringing uses for 

contributory infringement. Thus, beyond the complete failure to plausibly plead direct 

infringement, the failure to plausibly plead indirect infringement also compels dismissal of those 

claims. 

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 7 of 24
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Plaintiff’s pleading failures are fatal to its Amended Complaint. This is not a case in which 

Plaintiff’s pleading suffers from some technicality. Instead, the Amended Complaint demonstrates 

non-infringement and a complete failure to plausibly allege infringement. As such, Defendants 

respectfully ask that the Court dismiss Plaintiff’s Amended Complaint.

II. BACKGROUND

A. The ’144 Patent

The ’144 Patent relates to selecting a virtual Local Area Network (VLAN) path from a path 

selection table using a specific formula. That formula is defined as “V modulus N, where V is the 

sequential ID number for a given VLAN and N is the total number of available paths for selection.”

See ’144 Patent, 6:20–23.

1 The allegedly novel feature of the ’144 Patent is using that V mod N 

formula instead of a hash algorithm to assign an incoming group of communication traffic to one 

of a plurality of paths. This is confirmed by the prosecution history, where the applicant 

distinguished the claimed V mod N calculation from hashing in order to overcome the prior art. 

See Ex. A ’144 Patent File History, 2014-07-17 Applicant Response, 6 (“[W]hile the cited portions 

of Matthews may mention a modulus operation, the modulus operation is merely performed on a 

hash value to obtain a path ID. However, the cited portions of Matthews do not compare the path 

ID ‘to indices on a path selection table’ or ‘select the path associated with an index equal to’ the 

path ID.”). 

Plaintiff asserts claim 1 in the Amended Complaint: 

1 “Modulus” or “mod” is a well-known mathematical calculation that provides the remainder upon 

dividing two numbers. For example, the result of “12 mod 5” is 2, because the remainder, when 

dividing 12 by 5, is 2. 

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1. A method of selecting, for a group of communication traffic, a 

communication path from a source node to a destination node through a 

network comprising a plurality of contiguous communication paths, the 

method comprising: 

determining lowest cost paths from the plurality of contiguous 

communication paths; 

determining V mod N, 

comparing a result of the determining to indices on a path selection table 

that associates a unique index with each of the plurality of communication 

paths, and 

selecting a path associated with an index equal to the result, wherein N is 

a number of the lowest cost paths in the plurality of communication paths 

and V is a group identifier corresponding to the group of communication 

traffic.

Tables 3 and 4 together depict an example of how the V mod N would work. Table 3 

shows the VLAN ID (i.e., “V”) for each of the VLANs:

 

’144 Patent, 5:55-6:10. Table 4 shows each of the possible paths: 

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 9 of 24
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Id., 6:26-39. Table 4 shows that there are 9 possible paths (numbered 0 through 8), and thus “N” 

is 9. These two tables provide the information to be used with the V mod N formula to select a 

path for each VLAN. For example, VLAN1 has an ID of 99, and 99 mod 9 is 0; so VLAN1 will 

be assigned to path 0. VLAN2 has an ID of 100 and 100 mod 9 is 1; so VLAN2 will be assigned 

to path 1. This same calculation is performed for each VLAN and the path is assigned accordingly 

in a round-robin fashion. Id., 6:20-24.

B. The Accused Product

Plaintiff has accused the Dell SmartFabric Operating System of infringing claim 1 of the 

’144 Patent. Among many other functions, the Accused Product can provide path mapping using 

Equal Cost Multiple Path (“ECMP”) routing. See 10.5.0 User Guide at 628.2

 “ECMP is a routing 

technique where next-hop packet forwarding to a single destination occurs over multiple best 

paths. When you enable ECMP, OS10 uses a hash algorithm to determine the next-hop.” Id 

(emphasis added). The User Guide on which Plaintiff relies explains how the hash algorithm load 

balances traffic by selecting the next port for traffic to follow: “To increase bandwidth and for load 

2 This user guide is quoted throughout the Complaint and is found at https://topicscdn.dell.com/pdf/smartfabric-os10-5-0_en-us.pdf. 

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 10 of 24
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balancing, traffic distributes across the next hops of an ECMP group or member ports of a port 

channel. OS10 uses a hash algorithm to determine a hash key. The egress port in a port channel 

or the next hop in an ECMP group is selected based on the hash key modulo the number of ports 

in a port channel or next hops in an ECMP group, respectively.” Id (emphasis added). Nothing 

in the Accused Product uses a “V mod N” calculation to select a path. 

C. Plaintiff’s Infringement Allegations

Plaintiff accuses Defendants of direct infringement of claim 1 of the ’144 patent based on 

making, using, or selling the Accused Product. See Am. Compl. at ¶¶ 13, 31.

3

 

Plaintiff’s indirect infringement allegations in its Original Complaint amounted to three 

sentences that parrot the legal elements and two website links that fail to support Plaintiff’s claims. 

See Original Compl. at ¶¶ 27–29. Those allegations completely failed to allege that Defendants 

had knowledge of the patent and knowledge of the infringement before Plaintiff filed suit. See id. 

Plaintiff’s Amended Complaint fails to fix the deficiencies in the Original Complaint. 

Plaintiff now alleges knowledge of the patent based on the filing, and dismissal, of an earlier 

complaint—which was not served—asserting the same patent. See Am. Compl. at ¶ 33. 

3 Plaintiff’s direct infringement allegations remain substantively deficient in its Amended 

Complaint. However, there is an addition of a conclusory sentence that “upon information and 

belief, each and every element of at least claim 1 of the ’144 Patent is performed or practiced by 

Defendants at least through Defendants’ own use and configuration of its own Accused Products, 

and/or through Defendants’ own testing and configuration of its own Accused Products, and/or 

through Defendants’ providing services for its Accused Products, including but not limited to 

providing installation, deployment, support, and configuration of its Accused Products.” Am. 

Compl. at ¶ 32. The addition of that sentence does not affect the arguments herein.

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III. LEGAL STANDARD

A. Direct Infringement

A complaint should be dismissed under Rule 12(b)(6) of the Federal Rules of Civil 

Procedure 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 non-conclusory 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.” 

Ashcroft, 556 U.S. at 678 (2009). “Threadbare recitals of the elements of a cause of action, 

supported by mere conclusory statements, do not suffice.” Id. “Where a complaint pleads facts 

that are merely consistent with a defendant’s liability, it stops short of the line between possibility 

and plausibility of entitlement to relief.” Id. (internal quotation marks omitted). Additionally, 

“under any pleading standard, a complaint must put a defendant ‘on notice as to what he must 

defend.’” Artrip v. Ball Corp., 735 Fed. Appx. 708, 715 (Fed. Cir. 2018) (affirming district court’s 

dismissal of complaint that used broad functional language copied from patent). Only those 

complaints which state a plausible claim for relief survive a motion to dismiss, and the reviewing 

court makes this determination by drawing on its “judicial experience and common sense.” 

Ashcroft, 556 U.S. at 679; 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 alleged infringer can only be liable if it 

“makes, uses, offers to sell, or sells” the allegedly infringing product. See 35 U.S.C. § 271(a). 

This requires that the plaintiff—at a minimum—plead facts that identify an allegedly infringing 

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 12 of 24
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product and describe how that 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 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). 

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 

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 13 of 24
8

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

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

IV. ARGUMENT

Plaintiff has not alleged—and cannot allege—that the Accused Product meets the claim 

limitations because: (1) Plaintiff fails to plead that the Accused Products determine “V mod N” 

where “V is a group identifier”; and (2) the functionality that Plaintiff instead accuses—a hash 

function in ECMP—was explicitly distinguished from the claims during the prosecution of the 

’144 Patent, and therefore cannot support an allegation of infringement. In view of its failure to 

identify any functionality that allegedly meets this limitation, Plaintiff cannot satisfy the

Iqbal/Twombly standard. Twombly, 550 U.S. 544, 555 (2007); Ashcroft, 556 U.S. at 678 (2009); 

see also De La Vega, 2020 WL3528411 (W.D. Tex, 2020), at *6-7.

A. Plaintiff Fails to Identify the Claimed “V mod N” Formula, and Instead Accuses 

Functionality That was Distinguished During Prosecution

Asserted claim 1 requires the key limitation that the claimed method determine “V mod N” 

where “V is a group identifier.”4 See supra § II.A. The “V mod N” formula, where “V is a group 

identifier,” is fundamental to the alleged invention. “V mod N” is expressly asserted in claim 1,

discussed throughout the specification of the ’144 Patent, seen in multiple Figures, and described 

in various embodiments of the invention. The entire purpose of the invention is to deliver data 

from a start to a destination node by the lowest cost paths via the “V mod N” function, where “V 

is a group identifier.” See e.g., ’144 Patent, 2:33-38, 2:59-64, 3:9-14, 7:35-39, 8:11-12, 9:13-20, 

and 10:11-18.

4 All other independent claims require the same limitation.

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Plaintiff fails to provide any plausible factual basis to allege that the Accused Product 

determines “V mod N” where V is a group identifier.5

 Nor can it. The allegations in the Amended 

Complaint—and the quoted portions of the User Guide—definitively establish that the Accused 

Product does not use the “V mod N” formula to select a path. Plaintiff repeatedly alleges, in almost 

every paragraph related to the Accused Product, that the Accused Product performs a hash 

algorithm and uses ECMP to perform routing. See Compl. at ¶¶ 15, 17-22, 25, 27. The Amended

Complaint establishes that this formula uses a “hash key modulo the number of ports in a port 

channel or next hops in an ECMP group, respectively” to determine the egress port or next channel. 

Id. ¶ 21. While the Amended Complaint clumsily suggests that somehow this corresponds to a “V 

mod N” calculation, that is the exact opposite of what the applicant said during prosecution. The 

applicant stressed that the claimed V is a group identifier, not a hash key, to get around the prior 

art during the prosecution of the ’144 Patent. See Ex. A ’144 Patent File History, 2014-07-17 

Applicant Response, 6 (“[W]hile the cited portions of Matthews may mention a modulus operation, 

the modulus operation is merely performed on a hash value to obtain a path ID. However, the 

cited portions of Matthews do not compare the path ID ‘to indices on a path selection table’ or 

‘select the path associated with an index equal to’ the path ID.”). Plaintiff cannot sustain its 

pleading burden by accusing the exact same functionality that was distinguished during 

5 The Amended Complaint includes additional sentences regarding resilient hashing and flow maps 

that do not cure any substantive deficiencies regarding its direct infringement allegations. See Am. 

Compl. at ¶¶ 18, 21-24, 27. All of those sentences simply describe in more detail the very same 

functionality that was accused in the Original Complaint, namely the use of a hash function to 

perform routing rather than the claimed use of a V mod N calculation.

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prosecution, and then simply adding conclusory statements that it meets the claim limitation. See

Ashcroft, 556 U.S. at 678 (2009).

The Federal Circuit has affirmed granted motions to dismiss in these circumstances. See 

Amgen Inc. v. Coherus BioSciences Inc., 931 F.3d 1154 (Fed. Cir. 2019) (affirming grant of a 

motion to dismiss because prosecution history estoppel barred patentees from succeeding on their 

infringement claim under doctrine of equivalents); Metricolor LLC v. L’Oreal S.A., 791 Fed. Appx. 

183, 188 (Fed. Cir. 2019) (finding that a patent claim was not sufficiently pleaded when the alleged 

functionality “plainly contradicted” the actual claim limitation).

Here, that Plaintiff accuses the same technology that was distinguished during prosecution 

is dispositive on this motion to dismiss. A court may “consider documents attached to or 

incorporated into the Complaint and matters of which judicial notice may be taken.” Auto–Dril, 

Inc. v. Nat’l Oilwell Varco, L.P., 6:15–CV–00091, 2015 WL 12868183, at *2 (W.D. Tex. June 24, 

2015), report and recommendation adopted, 2015 WL 11004538 (W.D. Tex. July 15, 2015); 

Lovelace v. Software Spectrum Inc., 78 F.3d 1015, 1017 (5th Cir. 1996). “On a motion for 

judgment on the pleadings . . . the court may consider ‘matters of public record’ . . . Prosecution 

histories constitute public records.” Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1008 

n.2 (Fed. Cir. 2018). 

Plaintiff cannot allege that the Accused Product’s use of a hash algorithm infringes because 

that is exactly what was distinguished during prosecution. Thus, these claims should be dismissed 

in their entirety. 

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 

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and contributory infringement. Beyond that failing, Plaintiff has further failed to adequately plead 

any pre-suit knowledge by Defendants of the patent, or pre-suit knowledge by Defendants of 

alleged infringement. 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 (citation 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 adequately plead the 

required “knowledge of the patent in suit and knowledge of patent infringement.” Commil USA, 

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

knowledge for indirect infringement”). Moreover, this Court has held—earlier this year—that 

allegations of knowledge based on a prior filed complaint are not enough to overcome a motion to 

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dismiss. See Parus Holdings Inc. v. Apple Inc., No. 6:19-cv-432, Feb. 20, 2020 Text Order 

GRANTING D.I. 54 (dismissing indirect infringement claims where plaintiff’s only allegation of 

knowledge were that “Defendant Apple has had knowledge of the ’431 Patent since at least the 

filing of the original complaint” and “[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”) (quoting D.I. 28 (Am. Compl.) at ¶ 44 (emphasis added)).

The Amended Complaint includes an erroneous footnote that attempts to distinguish 

Aguirre by asserting that “Delaware courts have since rejected this rule.” Am. Compl. at ¶ 33, n.1. 

Plaintiff’s statement that Delaware has rejected the pre-suit knowledge requirement is incorrect. 

See, e.g., VLSI Tech. LLC v. Intel Corp., C.A. No. 18-966-CFC, 2019 WL 1349468, at *2 (D. Del. 

Mar. 26, 2019) (“[T]he complaint itself cannot serve as the basis for a defendant’s actionable 

knowledge.”); Dynamic Data Techs., LLC v. Amlogic Holdings Ltd., C.A. No. 19-1239-CFC, 2020 

WL 4365809, at *2 (D. Del. July 30, 2020) (“‘The purpose of a complaint is not to create a claim 

but rather to obtain relief for an existing claim. For that reason, the complaint itself cannot be the 

source of the knowledge required to sustain claims of induced infringement.’”) (citation omitted). 

In any event, this Court has expressly adopted the pre-suit knowledge requirement, and continues 

to do so. See, e.g., Parus, No. 6:19-cv-432, Feb. 20, 2020 Text Order GRANTING D.I. 54. 

Despite this clear precedent, Plaintiff’s only allegations of knowledge are based on the 

filing of its prior complaint asserting the same patent, which it inexplicably dismissed: 

In May 2020, Plaintiff filed a suit against Defendants asserting 

infringement of the same patent and by the same accused products

that are asserted in this case. Plaintiff dismissed the prior suit before 

filing this suit. As a result of the prior suit, Defendants had notice 

and actual or constructive knowledge of their infringement of the 

patent-in-suit since at least May 2020, before the filing of this case. 

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Further, Defendants had knowledge of their infringement of the 

patent-in-suit before the filing of this Amended Complaint.

Am. Compl. at ¶ 33 (emphasis added). Like the allegations in Parus, WSOU’s allegations of 

knowledge are limited to references to a prior filed complaint and thus fail to state a claim for 

indirect infringement. See id.; Parus, No. 6:19-cv-432, Feb. 20, 2020 Text Order GRANTING 

D.I. 54.6

 To make matters worse, Plaintiff’s May 19, 2020 complaint was never served, so it 

cannot form the basis for Defendants’ knowledge. See Rosenthal Decl., Ex. B (Docket for WSOU 

v. Dell Inc., et al., No. 6-20-cv-00403) (showing dismissal prior to service of the complaint). 

Allowing Plaintiff to avoid the pre-suit knowledge requirement by filing a complaint, voluntarily 

dismissing that complaint, and refiling the same complaint two weeks later, would be at odds with 

the knowledge requirement itself.7

 And, it would elevate form over substance and encourage 

litigants to use such a tactic to essentially eviscerate the pre-suit knowledge requirement. 

Plaintiff’s failure to raise a plausible inference of pre-suit knowledge of the patent and 

6 See also Proxyconn Inc. v. Microsoft Corp., No. SACV 11-1681 DOC ANX, 2012 WL 1835680, 

at *5 (C.D. Cal. May 16, 2012) (“[A] complaint fails to state a claim for indirect patent 

infringement where the only allegation that purports to establish the knowledge element is the 

allegation that the complaint itself or previous complaints in the same lawsuit establish the 

defendant’s knowledge of the patent”) (emphasis added); Orlando Commc’ns LLC v. LG Elecs., 

Inc., No. 6:14-CV-1017-ORL-22, 2015 WL 1246500, at *9 (M.D. Fla. Mar. 16, 2015) (“‘Prior to 

suit’ does not mean prior to the current iteration of the Complaint.”). 

7 See, e.g., Brandywine Commc’ns Techs., LLC v. T-Mobile USA, Inc., 904 F. Supp. 2d 1260, 

1268–69 (M.D. Fla. 2012) (“[B]ecause 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.” ); Simplivity Corp. v. Springpath, Inc., No. CV 4:15-

13345-TSH, 2016 WL 5388951, at *8 (D. Mass. July 15, 2016) (“The suggested ‘knowledge via 

filing’ framework dilutes the knowledge requirement to the point of meaninglessness, since by 

virtue of being sued for infringement, a party necessarily is aware of the patent-in-suit.”) 

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 19 of 24
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knowledge of infringement are fatal to its indirect infringement claims, and as such these claims 

should be dismissed.

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)). 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. See Am. Compl. at ¶ 34. 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 Plaintiff’s “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 

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, 

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 20 of 24
15

2019 WL 3940952, at *2.8

Plaintiff’s inducement claim should be dismissed because the Amended 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) (citation omitted). 

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

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

Am. Compl. at ¶ 35. 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”). 

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.

8 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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16

V. CONCLUSION

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

and dismiss Plaintiff’s Amended 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.

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 22 of 24
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Dated: October 30, 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-00473-ADA Document 36 Filed 10/30/20 Page 23 of 24
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CERTIFICATE OF SERVICE

The undersigned certifies that on this 30th 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

Case 6:20-cv-00473-ADA Document 36 Filed 10/30/20 Page 24 of 24