IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

USC IP PARTNERSHIP, L.P., 

 Plaintiff, 

v. 

FACEBOOK, INC., 

 Defendant. 

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§ 

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§ 

§ 

§ 

Civil Action No. 2:20-cv-00555-ADA 

JURY TRIAL DEMANDED 

DEFENDANT FACEBOOK, INC.’S REPLY IN SUPPORT OF 

ITS RULE 12(b)(6) MOTION TO DISMISS 

Case 6:20-cv-00555-ADA Document 14 Filed 09/18/20 Page 1 of 14
TABLE OF CONTENTS

Page

 -iI. INTRODUCTION ............................................................................................................. 1

II. ARGUMENT ..................................................................................................................... 1 

A. PLAINTIFF STILL DOES NOT STATE A CLAIM FOR DIRECT 

INFRINGEMENT.................................................................................................. 1 

B. PLAINTIFF STILL DOES NOT STATE A CLAIM FOR INDIRECT 

INFRINGEMENT.................................................................................................. 5 

C. PLAINTIFF STILL DOES NOT STATE A CLAIM FOR WILLFUL 

INFRINGEMENT.................................................................................................. 6 

D. PLAINTIFF SHOULD BE DENIED LEAVE TO AMEND ITS 

COMPLAINT ........................................................................................................ 8 

III. CONCLUSION .................................................................................................................. 9 

Case 6:20-cv-00555-ADA Document 14 Filed 09/18/20 Page 2 of 14
-iiTABLE OF AUTHORITIES 

 Page(s) 

Cases 

Aguirre v. Powerchute Sports, LLC, 

No. SA-10-cv-0702-XR, 2011 WL 2471299 (W.D. Tex. June 17, 2011) .................................6 

De La Vega v. Microsoft Corp., 

No. 19-CV-00612-ADA, 2020 WL 3528411 (W.D. Tex. Feb. 11, 2020) .............................2, 3 

Frac Shack, Inc. v. Afd Petroleum Tex. Inc., 

No. 7:19-cv-00026-DC, 2019 WL 3975284 (May 23, 2019) ...................................................8 

Inhale, Inc v. Gravitron, LLC, 

No. 1-18-CV-762- LY, 2018 WL 7324886 (W.D. Tex. Dec. 10, 2018) ...................................6 

Joao Control & Monitoring Sys., LLC v. Protect Am., Inc.

No. 1-14-cv-134-LY, 2015 U.S. Dist. LEXIS 74262 (W.D. Tex. Mar. 24, 

2015) ......................................................................................................................................3, 4 

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

572 U.S. 915 (2014) ...................................................................................................................5 

Lyda v. CBS Corp., 

838 F.3d 1331 (Fed. Cir. 2016)..................................................................................................4 

Marucci Sports, L.L.C. v. NCAA, 

751 F.3d 368 (5th Cir. 2014) .....................................................................................................8 

MAZ Encryption Techs. LLC v. BlackBerry, Ltd., 

No. 6:15-cv-1167-RWS-JDL, 2016 U.S. Dist. LEXIS 191607 (E.D. Tex. Jun. 

7, 2016) (Love, J.) ......................................................................................................................4 

Meetrix IP, LLC v. Cisco Sys., Inc., 

No. 1-18-CV-309-LY, 2018 U.S. Dist. LEXIS 225719 (W.D. Tex. Nov. 30, 

2018) (Yeakel, J.) .......................................................................................................................6 

Packet Intelligence LLC v. NetScout Sys., 

No. 2:16-cv-00230-JRG, 2019 U.S. Dist. LEXIS 93710 (E.D. Tex. Jun. 4, 

2019) (Gilstrap, C.J.), rev’d in part on other grounds, No. 2019-2041, 2020 

WL 3966973 (Fed. Cir. Jul. 14, 2020) .......................................................................................7 

Parity Networks, LLC v. Cisco Sys., 

No. 6:19-CV-00207-ADA, 2019 U.S. Dist. LEXIS 144094 (W.D. Tex. Jul. 

26, 2019) ................................................................................................................................4, 6 

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iii 

Parus Holdings Inc. v. Apple Inc., 

6:19-cv-00432-ADA (W.D. Tex.) (Jan. 31, 2020) ....................................................................6 

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

Processing Sys. Patent Litig.), 

681 F.3d 1323 (Fed. Cir. 2012)..................................................................................................2 

Raytheon Co. v. Cray, Inc., 

No. 2:16-cv-00423-JRG-RSP, 2017 U.S. Dist. LEXIS 56729 (E.D. Tex. Mar. 

13, 2017) ....................................................................................................................................4 

Stripling v. Jordan Prod. Co., 

LLC, 234 F.3d 863 (5th Cir. 2000) ............................................................................................8

Vehicle Operation Techs. LLC v. Am. Honda Motor Co. Inc., 

67 F. Supp. 3d 637 (D. Del. 2014) .............................................................................................2 

VLSI Tech., LLC v. Intel Corp., 

No. 6:19-CV-000254-ADA, 2019 U.S. Dist. LEXIS 155285 (W.D. Tex. Aug. 

6, 2019) (Albright, J.) ................................................................................................................6 

Statutes 

35 U.S.C. § 284 ................................................................................................................................8 

Other Authorities 

Fed. R. Civ. P. 15(a)(1) ................................................................................................................2, 8 

Federal Rule of Civil Procedure 12(b)(6) ....................................................................................1, 9 

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I. INTRODUCTION 

Plaintiff still has not identified any Facebook product or feature that plausibly resembles 

an “intent engine” in the accused Facebook system, despite having had the opportunity to freely 

amend its complaint to do so. Instead, Plaintiff’s brief doubles down on the vague and incomplete 

allegations laid out in its original complaint, and argues that its broad identification of “Facebook 

News Feed” as the “Accused Instrumentalities,” coupled with the service of its initial infringement 

contentions, is sufficient at the pleading stage. Not true. Without providing any factual allegations 

in its complaint that purport to identify an “intent engine” in the accused Facebook system, let 

alone how such an “intent engine” is used in the accused system, Plaintiff fails to describe a key 

element of several limitations in Claim 1, and therefore cannot support its claim for direct 

infringement. Dismissal of this action is warranted.1 

Plaintiff’s indirect infringement claims remain similarly deficient. As Plaintiff concedes, 

absent direct infringement allegations, Plaintiff cannot plausibly allege indirect infringement. Nor 

does Plaintiff make any effort to allege pre-suit knowledge of infringement to support its pre-suit 

induced or contributory infringement claims. For the same reason, Plaintiff’s threadbare 

willfulness allegations should also be dismissed. 

In light of the above, the complaint does not state a plausible claim for infringement. 

Dismissal for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6) is appropriate. 

II. ARGUMENT 

A. Plaintiff Still Does Not State a Claim for Direct Infringement 

Plaintiff still fails to allege any facts that could plausibly support an inference that any 

1 Facebook denies all allegations in Plaintiff’s response not explicitly denied in Facebook’s 

Motion to Dismiss.

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Facebook product or feature constitutes an “intent engine.” Instead, Plaintiff broadly contends 

that identifying “Facebook News Feed” as the “Accused Instrumentalities” is enough at the 

pleading stage2

, and points to its initial infringement contentions as evidence that it has sufficiently 

identified how the “Accused Instrumentalities” infringe Claim 1 of the Asserted Patent. (D.I. 13 

at 3-6). Even assuming that Plaintiff’s initial infringement contentions (which Plaintiff did not 

provide the Court) were adequate (they are not), Plaintiff’s complaint remains deficient. As stated 

in Facebook’s Opening Brief, (see D.I. 9 at 4-5), the law requires Plaintiff to plead sufficient facts 

to plausibly support a reasonable inference that a Facebook product practices each of the 

limitations in the asserted claim(s). De La Vega v. Microsoft Corp., No. 19-CV-00612-ADA, 2020 

WL 3528411, at *6 (W.D. Tex. Feb. 11, 2020); see also Vehicle Operation Techs. LLC v. Am. 

Honda Motor Co. Inc., 67 F. Supp. 3d 637, 642 (D. Del. 2014) (“To show infringement of a patent, 

a patentee must supply sufficient evidence to prove that the accused product or process contains, 

either literally or under the doctrine of equivalents, every limitation of the properly construed 

claim.”) (internal citation omitted). That Plaintiff had the opportunity to amend its original 

complaint as a matter of course under the Federal Rules (See Fed. R. Civ. P. 15(a)(1)), and has 

opted not to do so, highlights the fact that it cannot plausibly allege any facts to support an 

inference that Facebook meets any of the limitations in Claim 1 involving an “intent engine.” 

2 In support of this contention, Plaintiff cites to R+L Carriers, Inc. v. DriverTech LLC (In re Bill 

of Lading Transmission & Processing Sys. Patent Litig.), 681 F.3d 1323, 1335 (Fed. Cir. 2012), 

which is inapposite. For one, the Federal Circuit’s decision in R+L Carriers was predicated on 

“the specificity required by Form 18,” which was abrogated by the Federal Rules in 2015. Id. at 

*1334-35; Fed. R. Civ. P. historical note; id. at appendix of forms (noting abrogation). 

Moreover, the complaint at issue in R+L Carriers “reference[d] specific claim elements that 

R+L asserts are being practiced,” and, in so doing, “provide[d] Qualcomm with information 

about which claims of the patent R+L assert[ed] are being infringed, and by whom, and about the 

activities R+L believes constitute infringement.” Id. at 1335. As articulated in Facebook’s 

Opening Brief, such is not the case here.

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Dismissal is appropriate. 

Plaintiff attempts to distinguish the Court’s holding in De La Vega on the basis that it

involved a claim for joint infringement rather than direct infringement, (D.I. 13 at 7), but the 

bottom line is that the relevant portion of the Court’s decision applies with equal force here. That 

is, contrary to Plaintiff’s suggestion, the Court’s decision to dismiss the plaintiff’s complaint in De 

La Vega was not predicated solely on the fact that the limitation at issue was one that required 

multiple actors such that it called into question the plaintiff’s joint infringement claim. Rather, the 

Court found that the plaintiff had failed to identify several important elements of the “coupling” 

limitation “in the context of the accused instrumentality and/or describe[] how each operates,” and 

determined that “[b]ecause Plaintiff does not include even a short written description of how the 

accused instrumentalities meet the ‘coupling’ limitation, his complaint fails to state a claim upon 

which relief can be granted.” De La Vega, 2020 WL 3528411, at *16-17. Just as the plaintiff in 

De La Vega failed to provide “even a short written description of how the accused instrumentalities 

[met] the ‘coupling’ limitation,” so too does Plaintiff here fail to provide even a short written 

description of how “Facebook News Feed” and “its computing infrastructure” meet the “intent 

engine” limitations. Again, dismissal is appropriate. 

Plaintiff’s series of cases it claims are exemplars of situations in which courts “have denied 

motions to dismiss based on descriptions of accused instrumentalities that are less detailed than 

that provided by USC IP” are distinguishable. (D.I. 13 at 4-5.) In Joao Control & Monitoring 

Sys., LLC v. Protect Am., Inc., the issue was not whether the plaintiff had pled sufficient facts to 

support a plausible inference that the defendant practiced each of the claim limitations required for 

Case 6:20-cv-00555-ADA Document 14 Filed 09/18/20 Page 7 of 14
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direct infringement3

 (as is the case here), but whether the plaintiff’s failure to identify with 

particularity each of the asserted claims was fatal to its complaint. No. 1-14-cv-134-LY, 2015 

U.S. Dist. LEXIS 74262, at *9-11 (W.D. Tex. Mar. 24, 2015) (Yeakel, J.). Again, here the issue 

is not that Plaintiff has not identified every potential asserted claim, it is that Plaintiff has not 

sufficiently pled facts to support its infringement allegations for even the single claim mentioned 

in its complaint. The court’s decision in MAZ Encryption Techs. LLC v. BlackBerry, Ltd., No. 

6:15-cv-1167-RWS-JDL, 2016 U.S. Dist. LEXIS 191607, at *9 (E.D. Tex. Jun. 7, 2016) (Love, 

J.) further illustrates this point. In Maz Encryption Techs., the court denied the defendants’ motion 

to dismiss because the plaintiff had “set[] forth each limitation of each of the asserted claims and 

cite[d] to Defendants’ [products] as factual bases to support its allegations of infringement.” Id. 

at *9 (emphasis added) (internal citation omitted). Similarly, in Raytheon Co. v. Cray, Inc., the 

court determined that the plaintiff’s direct infringement allegations were sufficient in view of the 

Federal Circuit’s decision in Lyda v. CBS Corp., 838 F.3d 1331, 1337 (Fed. Cir. 2016), which it 

interpreted as “require[ing] factual allegations sufficient to give rise to a plausible inference that a 

device meets all elements of a specific claim.” No. 2:16-cv-00423-JRG-RSP, 2017 U.S. Dist. 

LEXIS 56729 at *10 (E.D. Tex. Mar. 13, 2017) (Payne, J.) (emphasis in original). Plaintiff has 

not done so here.4

 

3 Joao Control is also distinguishable in that the basis for the Court’s holding that the plaintiff’s 

direct infringement allegations were sufficient was that the plaintiff had completed Form 18, 

which was abrogated in by the Federal Rules in 2015. 2015 U.S. Dist. LEXIS 74262, at *9; 

see also Fed. R. Civ. P. historical note; id. at appendix of forms (noting abrogation).

4

 Plaintiff also cites Parity Networks, LLC v. Cisco Sys., where the plaintiff had already filed an 

amended complaint, and had yet to serve its infringement contentions, which led the Court to 

conclude that the “deficiencies” in its pleadings could be cured in its contentions. No. 6:19-CV00207-ADA, 2019 U.S. Dist. LEXIS 144094 at *4 (W.D. Tex. Jul. 26, 2019) (Albright, J.). 

Here, as described above, Plaintiff has made no effort to amend its complaint and has already 

served its initial infringement contentions, which are similarly deficient, indicating that it cannot 

address the deficient direct infringement allegations in its complaint

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In the absence of any coherent factual allegations that could support a plausible inference 

that any Facebook product or feature constitutes an “intent engine,” as required by at least four of 

Claim 1’s limitations, Plaintiff’s direct infringement claims should be dismissed. 

B. Plaintiff Still Does Not State a Claim for Indirect Infringement 

First, as Plaintiff acknowledges, (see D.I. 13 at 8 n.2), there cannot be any indirect 

infringement without direct infringement. Limelight Networks, Inc. v. Akamai Techs., Inc., 572 

U.S. 915, 921 (2014). Plaintiff therefore fails to state a claim for indirect infringement because 

there has been no plausible allegation of a single direct infringer. (See supra Section I(A).) 

Second, Plaintiff’s pre-suit indirect infringement claims should also be dismissed. Rather 

than attempt to argue that it sufficiently alleged pre-suit knowledge in support of any claims of 

pre-suit indirect infringement or willfulness, Plaintiff contends in its response that its pre-suit 

indirect infringement claims should not be dismissed on the basis that it is premature for the Court 

to parse between pre and post-suit knowledge.5

 (See D.I. 13 at 8-11.) As an initial matter, Plaintiff 

cites no authority from this district in support of this contention. Even worse, Plaintiff makes no 

effort to distinguish the controlling case law Facebook cites in its Opening Brief, (See D.I. 9 at 8), 

which directly contradicts Plaintiff’s contention and demonstrates that this Court has repeatedly 

dismissed pre-suit indirect infringement claims for a lack of pre-suit knowledge. Instead, Plaintiff 

argues that the fact that the Court has “freely granted [] plaintiffs leave to amend” somehow 

compels the denial of Facebook’s motion to dismiss Plaintiff’s pre-suit indirect infringement 

claims. (D.I. 13 at 10-11.) Not only does this argument not follow as a logical matter, but also, 

Plaintiff mischaracterizes the Court’s prior holdings. As Plaintiff acknowledges in its brief, this 

Court has repeatedly granted motions to dismiss pre-suit indirect infringement claims that are 

5 Facebook notes that Plaintiff’s brief is silent as to the complaint’s insufficient willful blindness 

allegations, which are discussed in Facebook’s Opening Brief. (D.I. 9 at 8-9.) 

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similar to those at issue in this case without granting the plaintiff any leave to amend. See, e.g., 

Meetrix IP, LLC v. Cisco Sys., Inc., No. 1-18-CV-309-LY, 2018 U.S. Dist. LEXIS 225719, at *11 

(W.D. Tex. Nov. 30, 2018) (Yeakel, J.) (granting motion to dismiss); Aguirre v. Powerchute 

Sports, LLC, No. SA-10-cv-0702-XR, 2011 WL 2471299, at *3 (W.D. Tex. June 17, 2011) (same). 

Moreover, even where the Court has granted plaintiffs leave to amend, it has not done so “freely.” 

To the contrary, in the cases Plaintiff points to, the Court’s decision was explicitly conditioned on 

the plaintiff’s ability to “elicit sufficient facts to support such an allegation.” Castlemorton 

Wireless, LLC, v. Comcast Corp., Comcast Cable Commc'ns, LLC, Minute Entry Granting Motion 

to Dismiss (July 25, 2020) (text order only); see also Parus Holdings Inc. v. Apple Inc., 6:19-cv00432-ADA (W.D. Tex.) (D.I. 101) (Jan. 31, 2020) (“Plaintiff may replead the dismissed claims 

in each case if Plaintiff are able to gather the sufficient facts during fact discovery to support such 

an allegation.”); VLSI Tech., LLC v. Intel Corp., No. 6:19-CV-000254-ADA, 2019 U.S. Dist. 

LEXIS 155285, at *3 (W.D. Tex. Aug. 6, 2019) (Albright, J.) (same). As discussed further below 

in Section II(D), that Plaintiff has had ample opportunity to amend its complaint in order to allege 

facts of Facebook’s pre-suit knowledge of the ’300 patent illustrates that it cannot make such a 

showing. To the extent Plaintiff alleges pre-suit indirect infringement, those allegations should be 

dismissed. 

C. Plaintiff Still Does Not State a Claim for Willful Infringement 

Plaintiff’s willful infringement allegations should similarly still be dismissed. Plaintiff has 

failed to plead any plausible facts regarding Facebook’s alleged pre-suit knowledge of 

infringement of the ’300 Patent. As stated in Facebook’s opening brief, (D.I. 9 at 9), a claim for 

willfulness-based enhanced damages requires knowledge of alleged infringement of the asserted 

patent “as of the time of the claim’s filing.” Parity Networks, U.S. Dist. LEXIS 144094, at *5; see 

also Inhale, Inc v. Gravitron, LLC, No. 1-18-CV-762- LY, 2018 WL 7324886, at *3 (W.D. Tex. 

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Dec. 10, 2018) (dismissing claim because complaint “lacks factual allegations raising a reasonable 

inference of pre-suit knowledge” of patent). In its response, Plaintiff makes no effort to distinguish 

this authority, and instead cites to three decisions from other courts for the proposition that presuit knowledge of an asserted patent is not required to state a claim for willful infringement.6

 At 

a minimum, Plaintiff’s pre-suit willful infringement allegations should be dismissed. 

 Regarding willful infringement more generally, Plaintiff points to the allegations in 

paragraphs 53-56 of its complaint as evidence of its “fulsome allegations regarding Facebook’s 

willful infringement.” (See D.I. 13 at 11-12.) But even accepting these allegations as true, none 

of them amount to factual allegations that could lead to the plausible inference that Facebook 

willfully infringed. 

6 Indeed, one of the cases Plaintiff cites from the Eastern District of Texas explicitly 

acknowledged that its holding was unique to that district. See Packet Intelligence LLC v. 

NetScout Sys., No. 2:16-cv-00230-JRG, 2019 U.S. Dist. LEXIS 93710, at *25-26 (E.D. Tex. Jun. 

4, 2019) (Gilstrap, C.J.) (“It is well-settled, at least in this District, that post-[filing] behavior can 

establish willful infringement.”) (emphasis in original), rev’d in part on other grounds, No. 

2019-2041, 2020 WL 3966973 (Fed. Cir. Jul. 14, 2020). 

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(D.I. 1 at 15.)7

 Critically, Plaintiff never addresses its citation of the wrong standard for willful 

infringement in paragraph 55, rendering the allegations implausible on their face. Beyond this 

fatal defect, Plaintiff alleges in these paragraphs that Facebook has had knowledge of the ’300 

patent as of the filing of this action, (¶ 53), and that Facebook allegedly (without any evidence) 

has a policy of not reviewing the patents of others. (¶ 54). Neither of these allegations is tied to 

any facts, nor do they otherwise show any knowledge by Facebook of its alleged infringement of 

the ’300 patent or even of the existence of the ’300 patent. 

As there are no plausible factual allegations to support the claim of willful infringement, 

Plaintiff’s willful infringement allegations should be stricken and its claim for willfulness-based 

enhanced damages under 35 U.S.C. § 284 should be dismissed. 

D. Plaintiff Should Be Denied Leave to Amend its Complaint 

Plaintiff’s request for leave to amend its complaint should be denied because amendment 

would be futile. Marucci Sports, L.L.C. v. NCAA, 751 F.3d 368, 379 (5th Cir. 2014); Stripling v. 

Jordan Prod. Co., LLC, 234 F.3d 863, 872-73 (5th Cir. 2000). Following the service of 

Facebook’s Opening Brief, the Federal Rules provided Plaintiff with abundant time to amend its 

complaint and remedy the deficiencies set forth in this reply, along with those noted in Facebook’s 

Opening Brief. Fed. R. Civ. P. 15(a)(1). Plaintiff’s failure to amend illustrates its inability to state 

plausible facts supporting its allegations. And Plaintiff’s inability to state plausible facts is 

accentuated by its initial infringement allegations – which Plaintiff tellingly did not attach – as 

they feature the same deficiencies as Plaintiff’s complaint. Dismissal is the appropriate remedy. 

7 The Frac Shack decision on which Plaintiff relies is distinguishable in that in it, the plaintiff 

provided a series of factual details in its complaint to suggest that the defendant had actually 

engaged in willful infringement. Frac Shack, Inc. v. Afd Petroleum Tex. Inc., No. 7:19-cv00026-DC, D.I. 38 at 41, 45 (W.D. Tex. Jun. 13, 2019) (Albright, J.); see also id., 2019 WL 

3975284 at 15-16 (May 23, 2019). 

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III. CONCLUSION 

For the foregoing reasons, and the reasons enumerated in Facebook’s Opening Brief In 

Support of its Motion to Dismiss, the complaint should be dismissed for failure to state a claim 

under Federal Rule of Civil Procedure 12(b)(6). 

Dated: September 18, 2020 

/s/ Heidi L. Keefe 

Heidi L. Keefe 

COOLEY LLP 

3175 Hanover Street 

Palo Alto, CA 94304 

Telephone: (650) 843-5000 

Fax: (650) 849-7400 

hkeefe@cooley.com 

Attorneys for Defendant Facebook Inc. 

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CERTIFICATE OF SERVICE 

Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify 

that, on September 18, 2020, all counsel of record who have appeared in this case are being 

served with a copy of the foregoing via the Court’s CM/ECF system. 

 /s/ Heidi L. Keefe 

 Heidi L. Keefe 

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