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

JURY TRIAL DEMANDED

DEFENDANT FACEBOOK, INC.’S OPENING BRIEF IN SUPPORT OF 

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

Case 6:20-cv-00555-ADA Document 9 Filed 08/28/20 Page 1 of 16
TABLE OF CONTENTS

Page

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

II. ARGUMENT..................................................................................................................... 2

A. Legal Standard For Motion to Dismiss.................................................................. 2

B. The Complaint Fails to State a Claim for Direct Infringement ............................. 4

C. The Complaint Fails to State a Claim for Indirect Infringement........................... 7

D. The Complaint Fails to State a Claim for Willfulness-Based Enhanced 

Damages................................................................................................................. 9

III. CONCLUSION................................................................................................................ 10

Case 6:20-cv-00555-ADA Document 9 Filed 08/28/20 Page 2 of 16
TABLE OF AUTHORITIES

Page(s)

-iiCases

Aguirre v. Powerchute Sports, LLC,

No. SA-10-cv-0702-XR, 2011 WL 2471299 (W.D. Tex. June 17, 2011).................................8

AIDS Healthcare Found., Inc. v. Gilead Scis., Inc.,

890 F.3d 986 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 415, 202 L. Ed. 2d 314 

(2018).........................................................................................................................................7

Ashcroft v. Iqbal,

556 U.S. 662 (2009).............................................................................................................2, 10

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007).............................................................................................................2, 10

Castlemorton Wireless, LLC, v. Comcast Corp., Comcast Cable Commc'ns, LLC,

2020 WL 2778417, No. 6:20-cv-00034-ADA (W.D. Tex. April 7, 2020)................................8

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

135 S. Ct. 1920 (2015)...............................................................................................................2

De La Vega v. Microsoft Corp.,

No. 19-CV-00612-ADA, 2020 WL 3528411 (W.D. Tex. Feb. 11, 2020).............................4, 7

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

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

Halo Electronics, Inc. v. Pulse Electronics, Inc.,

136 S.Ct. 1923 (2016)..........................................................................................................3, 10

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

572 U.S. 915 (2014)...................................................................................................................7

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

No. 18-CV-309-LY, 2018 WL 8261315 (W.D. Tex. Nov. 30, 2018).............................3, 8, 10

Modern Telecom Sys., LLC v. TCL Corp.,

No. 17-583-LPS-CJB, 2017 WL 6524526 (D. Del. Dec. 21, 2017)..........................................7

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

2019 WL 3940952 (W.D. Tex. July 26, 2019) (Albright, J.) ................................................3, 9

Parus Holdings Inc. v. Apple Inc.,

6:19-cv-00432-ADA (W.D. Tex.) (November 5, 2019) (Attached hereto as 

Ex. 1)..........................................................................................................................................8

Case 6:20-cv-00555-ADA Document 9 Filed 08/28/20 Page 3 of 16
TABLE OF AUTHORITIES

Continued

Page(s)

iii

In re Seagate Technology, LLC,

497 F.3d 1360 ..........................................................................................................................10

Välinge Innovations AB v. Halstead New England Corp.,

2018 WL 2411218 (D. Del. May 29, 2018)...............................................................................3

VLSI Tech. LLC v. Intel Corp.,

No. 18-966-CFC, 2019 WL 1349468 (D. Del. Mar. 26, 2019) .................................................3

VLSI Technology, LLC v. Intel Corp.,

No. 6:19-cv-254-ADA, 2019 U.S. Dist. LEXIS 155285 (W.D. Tex. Aug. 6, 

2019) ......................................................................................................................................8, 9

Statutes

35 U.S.C.

§§ 271(b)-(c)......................................................................................................................2, 3, 7

§ 284.........................................................................................................................................10

Other Authorities

Rule 12(b)(6)....................................................................................................................................2

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I. INTRODUCTION

Plaintiff USC IP Partnership, L.P.’s (“Plaintiff”) complaint should be dismissed because 

it does not assert plausible claims of direct infringement, indirect infringement (both pre and 

post-suit), or willful infringement. 

Plaintiff’s claim of direct infringement fails because it does not plead any facts plausibly 

showing that any Facebook product or service includes a number of the claim limitations of the 

asserted claim.1

 In particular, the complaint never identifies any “intent engine” in the accused 

Facebook system, nor does it describe how any of the “intent engine” related limitations are met 

by the Facebook accused system. Indeed, this is likely because no such “intent engine” exists. 

Plaintiff’s complaint therefore fails to state a claim for relief for direct infringement. As direct 

infringement is a prerequisite for a finding of indirect infringement, Plaintiff's indirect 

infringement claims fail as well.

The complaint’s allegations of pre-suit contributory or induced infringement are also 

deficient. First, Plaintiff’s pre-suit indirect infringement claims should be dismissed because the 

complaint does not allege that Facebook had any pre-suit knowledge of infringement of the ’300 

patent. Second, Plaintiff’s pre-suit indirect infringement claims should be dismissed because 

Plaintiff does not plead any facts which, if taken as true, could support a finding that Facebook

took “deliberate actions to avoid confirming a high probability of wrongdoing” such that Facebook

“can almost be said to have actually known the critical facts.” Global-Tech Appliances, Inc. v. 

SEB S.A., 563 U.S. 754, 769 (2011). 

Plaintiff’s willful infringement allegations should similarly be dismissed. First, as is true 

1 Facebook denies any and all allegations of infringement and also denies that the complaint has 

adequately pled infringement with respect to any limitation of any asserted claim.

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for Plaintiff’s indirect infringement claims, Plaintiff’s willfulness-based enhanced damages claim 

fails due to a lack of alleged pre-suit knowledge. Second, Plaintiff’s willfulness allegations amount 

to nothing more than threadbare recitals of the (wrong) legal standard for willfulness, and are thus 

fatally flawed.

II. ARGUMENT

A. Legal Standard For Motion to Dismiss

Rule 12(b)(6) requires that a complaint contain sufficient factual matter, if accepted as true, 

to “‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) 

(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To meet this factual plausibility 

standard, the plaintiff must plead “factual content that allows the court to draw the reasonable 

inference that the defendant is liable for the misconduct alleged,” based on “more than a sheer 

possibility that a defendant has acted unlawfully.” Id. (citing Twombly, 550 U.S. at 556). 

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

do not suffice.” Id. (citing Twombly, 550 U.S. at 555). Thus, “where the well-pleaded facts do 

not permit the court to infer more than the mere possibility of misconduct,” the complaint fails to 

show that the pleader is entitled to relief and it should be dismissed. Id. at 679. 

Allegations under 35 U.S.C. §§ 271(b)-(c) require the plaintiff to plead specific facts

sufficient to show, if proven true, that the accused infringer had actual knowledge of the patentsin-suit, or was willfully blind to the existence of the patents-in-suit. See, e.g., Global-Tech, 563 

U.S. at 765-66 (induced infringement, like contributory infringement, requires “knowledge that 

the induced acts constitute patent infringement” or at least “willful blindness” to the likelihood of 

infringement); Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015) (“Like induced 

infringement, contributory infringement requires knowledge of the patent in suit and knowledge 

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of patent infringement.”); Parity Networks, LLC v. Cisco Sys., Inc., 2019 WL 3940952, at *2 (W.D. 

Tex. July 26, 2019) (Albright, J.) (complaint for indirect infringement requires allegations of “presuit knowledge Defendant had of the asserted patents”); Meetrix IP, LLC v. Cisco Sys., Inc., No. 

18-CV-309-LY, 2018 WL 8261315, at *2 (W.D. Tex. Nov. 30, 2018) (“[i]ndirect infringement 

under Section 271(b)–(c) requires actual knowledge of or willful blindness to the infringed patent’s 

existence.”) (citing Global-Tech, 563 U.S. at 766); VLSI Tech. LLC v. Intel Corp., No. 18-966-

CFC, 2019 WL 1349468, at *1 (D. Del. Mar. 26, 2019) (dismissing indirect infringement claims 

for failure to plead facts sufficient to establish actual knowledge or willful blindness). A showing 

of willful blindness requires that “(1) [t]he defendant must subjectively believe that there is a high 

probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of 

that fact.” Global-Tech, 563 U.S. at 769.

Similarly, a plaintiff who alleges that an accused infringer has engaged in willful 

infringement must plausibly allege the “subjective willfulness of a patent infringer, intentional or 

knowing.” Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 1933 (2016). This 

requires a plaintiff to allege facts plausibly showing that the accused infringer not only had presuit knowledge of the patent-in-suit, but also that “([1]) after acquiring that knowledge, it infringed 

the patent; and ([2]) in doing so, it knew, or should have known, that its conduct amounted to 

infringement of the patent.” Parity Networks, 2019 WL 3940952, at *3 (quoting Välinge 

Innovations AB v. Halstead New England Corp., 2018 WL 2411218, at *13 (D. Del. May 29, 

2018)); see also VLSI Tech. LLC v. Intel Corp., No. 18-966-CFC, 2019 WL 1349468, at *2 (D. 

Del. Mar. 26, 2019) (dismissing willful infringement claims because “the complaint itself cannot 

serve as the basis for a defendant’s actionable knowledge [of the patent]. The purpose of a 

complaint is not to create a claim but rather to obtain relief for an existing claim.”). 

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B. The Complaint Fails to State a Claim for Direct Infringement

Plaintiff fails to state a plausible claim for direct infringement because the complaint does 

not contain any facts that could plausibly support an inference that any Facebook product practices 

each of the limitations in the asserted claim. De La Vega v. Microsoft Corp., No. 19-CV-00612-

ADA, 2020 WL 3528411, at *6 (W.D. Tex. Feb. 11, 2020) (dismissing with prejudice the plaintiff’s 

complaint where “‘the Complaint [was] devoid of allegations that would support an inference that 

[defendant] (or anyone) perform[ed] the coupling steps.’”) Claim 1, which is the only claim the 

complaint alleges Facebook infringed, requires:

2

 

receiving into an intent engine at least one input parameter from a web browser 

displaying the webpage; 

processing the at least one input parameter in the intent engine to determine at least one 

inferred intent;

providing the at least one inferred intent to the web browser to cause the at least one 

inferred intent to be displayed on the webpage;

prompting the visitor to confirm the visitor’s intent;

receiving a confirmed intent into the intent engine; 

processing the confirmed intent in the intent engine to determine at least one 

recommended webpage that matches the confirmed intent, the at least one recommended 

webpage selected from a plurality of webpages within a defined namespace; 

causing the webpage in the web browser to display at least one link to the at least one 

recommended webpage; 

prompting the visitor to rank the webpage for the inferred intent;

receiving a rank from the web browser; 

and storing a datapoint comprising an identity of the webpage, the inferred intent and the 

received rank. 

2 Each of the independent claims requires an “intent engine.” (’300 patent at 19:6-10 (Claim 5); 

20:2-5, 20:10 (Claim 11).)

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(D.I. 1, Ex. A, (’300 patent) at 18:36-58 (Claim 1) (underlining added).) The complaint does not 

include any allegations that would support a plausible inference that Facebook (or anyone) meets 

any of the limitations in claim 1 that involve an “intent engine.” Specifically, nowhere in the 

complaint does the Plaintiff provide any description of the purported “intent engine” in the 

Accused Instrumentality (or any product for that matter). Nor does the complaint explain how

such an “intent engine” is used to meet these claim limitations. Instead, the complaint vaguely 

alleges, with conclusory statements, that “Defendant” performs the limitations and refers to

screenshots without tying any Facebook system to the “intent engine” claim language. Exemplary 

allegations from the complaint are depicted below.

“By making and using the Accused Instrumentalities, Defendant receives input parameters

from a web browser displaying a webpage.” (D.I. 1, ¶ 36) (underlining added).

“By making and using the Accused Instrumentalities, Defendant processes “signals,” 

including input parameters, related to the visitor to the Accused Instrumentalities to infer 

intent.”

(D.I. 1, ¶ 37) (underlining added). 

“By making and using the Accused Instrumentalities, Defendant prompted the visitor to 

confirm the visitor’s intent by, for example, reacting to the stories displayed to the visitor, 

or providing feedback for the stories.” 

Case 6:20-cv-00555-ADA Document 9 Filed 08/28/20 Page 9 of 16
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(D.I. 1, ¶ 41.) 

“By making and using the Accused Instrumentalities, Defendant recommended and 

displayed a link to at least one webpage, such as an advertisement, that matches the visitor’s 

confirmed intent.”

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(D.I. 1, ¶ 42.) None of these statements or screenshots identify any Facebook product or feature 

that constitutes an “intent engine.” Nor do they identify how any such “intent engine” is used to 

satisfy the claim limitations. Without more, these allegations fail to state a plausible claim for 

infringement. De La Vega, 2020 WL 3528411, at *6 (dismissing with prejudice the plaintiff’s 

complaint where the plaintiff “merely repeat[ed] the claim language and block quote[d] passages 

from his Original Complaint.”); see also Modern Telecom Sys., LLC v. TCL Corp., No. 17-583-

LPS-CJB, 2017 WL 6524526, at *3 (D. Del. Dec. 21, 2017) (“simply parroting back the words of 

the claim and stating (without more) that the Blackberry PRIV infringes that claim is not helpful”). 

The complaint’s direct infringement claims should be dismissed. 

C. The Complaint Fails to State a Claim for Indirect Infringement.

Plaintiff also fails to plausibly allege any claim of indirect infringement. Sections 271(b)-

(c) require a patentee to show that its patent was directly infringed. See, e.g., Limelight Networks, 

Inc. v. Akamai Techs., Inc., 572 U.S. 915, 921 (2014) (“[O]ur case law leaves no doubt that 

inducement liability may arise ‘if, but only if, [there is] ... direct infringement.’”); see also AIDS 

Healthcare Found., Inc. v. Gilead Scis., Inc., 890 F.3d 986, 992 (Fed. Cir. 2018), cert. denied, 139 

S. Ct. 415, 202 L. Ed. 2d 314 (2018) (“Liability for induced infringement requires that some other 

entity is directly infringing the patent.”); De La Vega, 2020 WL 3528411, at *7 (“To support a 

claim for indirect infringement, a plaintiff must plead ‘facts sufficient to allow an inference that at 

least one direct infringer exists.’”) (citation omitted). For the reasons discussed above, Plaintiff 

makes no such showing of direct infringement here. Plaintiff’s indirect infringement claims should

be dismissed. 

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

dismissed because the complaint fails to allege any facts that Facebook had pre-suit knowledge of 

infringement of the ’300 patent. Global-Tech, 563 U.S. at 765-766 (2011). Rather, the complaint 

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merely provides that “Defendant has knowledge of the Asserted Patent at least as of the date when 

it was notified of the filing of this action.” (D.I. 1, ¶ 53). This conclusory allegation, even if taken 

as true, does not allow for any inference, let alone a reasonable one, that Facebook had actual presuit knowledge of any alleged infringement of the ’300 patent. It did not. This Court has routinely 

held that such allegations are insufficient to support a pre-suit indirect infringement claim. See, 

e.g., Castlemorton Wireless, LLC, v. Comcast Corp., Comcast Cable Commc'ns, LLC, 2020 WL 

2778417, No. 6:20-cv-00034-ADA (W.D. Tex. April 7, 2020) (moving to dismiss plaintiff’s presuit induced infringement claims where the complaint alleged that the accused infringer “had 

knowledge of the [Patent-in-Suit] since at least service of this Complaint or shortly thereafter.”); 

Id. at Minute Entry Granting Motion to Dismiss (July 25, 2020) (text order only); see also Parus 

Holdings Inc. v. Apple Inc., 6:19-cv-00432-ADA (W.D. Tex.) (D.I. 35) (November 5, 2019) 

(Attached hereto as Ex. 1); Id., Minute Order Granting Motion to Dismiss (D.I. 101) (Jan. 31, 

2020) (text order only); VLSI Technology, LLC v. Intel Corp., No. 6:19-cv-254-ADA, 2019 U.S. 

Dist. LEXIS 155285 (W.D. Tex. Aug. 6, 2019); Meetrix IP v. Cisco Sys. at *2; Aguirre v. 

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

2011) (“To the extent Aguirre relies on knowledge of Aguirre’s patent after the lawsuit was filed, 

such knowledge is insufficient to plead the requisite knowledge for indirect infringement.”). 

Plaintiff’s indirect infringement claims should thus be dismissed to the extent Plaintiff alleges presuit induced or contributory infringement because Plaintiff has failed to set forth any plausible 

allegation that Facebook had pre-suit knowledge of any alleged infringement of the ’300 patent.

Plaintiff’s conclusory willful blindness allegation is similarly insufficient to support any 

pre-suit indirect infringement allegations in its complaint. The complaint merely alleges, on 

information and belief, that “Defendant has a policy or practice of not reviewing the patents of 

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others.” But even if that were true, it does not amount to any allegation that Facebook was willfully 

blind to its infringement of the ’300 patent, as is required. Global-Tech, 563 U.S. at 766. Indeed,

this Court has recently held that bare allegations of a company’s alleged “policy that forbids its 

employees from reading patents held by outside companies or individuals is insufficient to meet 

the test of willful blindness.” VLSI Technology, 2019 U.S. Dist. LEXIS 155285 at *3. Plaintiff’s 

indirect infringement claims should thus be dismissed to the extent Plaintiff alleges pre-suit 

induced or contributory infringement because Plaintiff’s complaint is devoid of any factual 

allegations supporting its claim that Facebook was willfully blind to any infringement of the ’300 

patent. 

D. The Complaint Fails to State a Claim for Willfulness-Based Enhanced 

Damages.

To the extent Plaintiff alleges willful infringement, those allegations are similarly deficient 

due to Plaintiff’s failure to plead any facts regarding Facebook’s alleged pre-suit knowledge of 

any infringement of the ’300 Patent. See, supra Section IV(C). 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, 2019 WL 3940952, at *3. Plaintiff’s bald assertion 

that “Defendant’s direct and indirect infringement of the Asserted Patent is, has been, and 

continues to be willful” cannot be supported by its claim that “Defendant has knowledge of the 

Asserted Patent at least as of the date when it was notified of the filing of this action,” or by any 

other allegation in its complaint. The simple fact is, there was no pre-suit notice.

Moreover, even if Plaintiff had plausibly alleged any facts of Facebook’s pre-suit 

knowledge of infringement of the ’300 patent, its claim for willfulness-based enhanced damages 

should still fail because Plaintiff’s allegations amount to no more than a “threadbare recital” of the 

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claim elements for willfulness and are therefore insufficient.3

 Ashcroft, 556 U.S. at 678 (citing 

Twombly, 550 U.S. at 555); Meetrix, 2018 WL 8261315, at *3. As this Court has made clear, “[a]

threadbare recital of the elements of willful infringement, supported by mere conclusory 

statements, does not suffice.” Meetrix, 2018 WL 8261315, at *3. Plaintiff’s willful infringement 

allegations should therefore be stricken and its claim for willfulness-based enhanced damages 

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

III. CONCLUSION

For the foregoing reasons, Facebook respectfully requests that the Court dismiss Plaintiff’s 

claims for direct and indirect infringement, as well as Plaintiff’s claim for willfulness-based 

enhanced damages.

3 Facebook notes that the complaint recites the standard for willfulness-based enhanced damages 

set forth in In re Seagate Technology, LLC, 497 F.3d 1360, 1371, which was abrogated by the 

Supreme Court in Halo, 136 S. Ct. 1923, 1925 (2016). Cf. D.I. 1 at 55 (“Defendant’s actions are 

at least objectively reckless as to the risk of infringing a valid patent and this objective risk was 

either known or should have been known by Defendant.”), with In re Seagate Tech., LLC, 497 

F.3d 1360, 1371 (Fed. Cir. 2007), abrogated by Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 

1923 (2016) (“[T]o establish willful infringement, a patentee must show by clear and convincing 

evidence that the infringer acted despite an objectively high likelihood that its actions constituted 

infringement of a valid patent. . . . If this threshold objective standard is satisfied, the patentee 

must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it 

should have been known to the accused infringer.”)

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Dated: August 28, 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 August 28, 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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