PAGE 1 – OPINION AND ORDER

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

MEMORY INTEGRITY, LLC,

Plaintiff,

v.

INTEL CORPORATION,

Defendant.

Case No. 3:15-cv-00262-SI

OPINION AND ORDER

John Mansfield, MansfieldLaw, 121 SW Morrison Avenue, Suite 400, Portland, OR 97204;

Bryan Atkinson, Farney Daniels PC, 800 S Austin Avenue, Suite 200, Georgetown, TX 78626; 

Jonathan Baker, Michael Saunders, and Gurtej Singh, Farney Daniels PC, 411 Borel Avenue, 

Suite 350, San Mateo, CA 94402. Of Attorneys for Plaintiff.

Renée E. Rothauge, Markowitz Herbold PC, 1211 SW Fifth Avenue, Suite 3000, Portland, OR 

97204; Michael J. Summersgill, Jordan L. Hirsch, and Sean K. Thompson, Wilmer Hale LLP, 60 

State Street, Boston, MA 02109; Grant K. Rowan, Wilmer Hale LLP, 1875 Pennsylvania 

Avenue NW, Washington, DC 20006; Arthur W. Coviello, Wilmer Hale LLP, 950 Page Mill 

Road, Palo Alto, CA 94304. Of Attorneys for Defendant.

Michael H. Simon, District Judge.

Plaintiff Memory Integrity, LLC (“Memory Integrity” or “MI”) brings this action for the 

infringement of five of its patents: U.S. Patent Nos. 7,296,121 (the “’121 patent”); 7,107,409 (the 

“’409 patent”); 7,103,636 (the “’636 patent”); 8,572,206 (the “’206 patent”); and 8,898,254 (the 

“’254 patent”). Broadly, the patents in suit cover algorithms to efficiently maintain cache 

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 1 of 8
PAGE 2 – OPINION AND ORDER

coherence

1

in certain types of multiprocessor systems, as well as systems that implement those 

algorithms. 

MI alleges that Defendant Intel Corporation (“Intel”) infringes each patent directly, 

contributorily, and by inducement. Intel moves for partial judgment on the pleadings against 

Memory Integrity’s claims for induced and contributory infringement, arguing that Memory 

Integrity has not alleged sufficient facts to support its claims. For the reasons below, Intel’s 

motion is granted in part and denied in part.

STANDARDS

A motion for judgment on the pleadings may be granted only when the pleading states no 

cognizable legal theory or does not contain factual allegations sufficient to support a claim for 

relief. Shroyer v. New Cingular Wireless Servs., Inc., 622 F.3d 1035, 1041 (9th Cir. 2010).2In 

evaluating the sufficiency of a pleading’s factual allegations, the court must draw all reasonable 

inferences in favor of the non-moving party and accept all well-pleaded material facts as true. 

Wilson v. Hewlett-Packard Co., 668 F.3d 1136, 1140 (9th Cir. 2012); Daniels-Hall v. Nat’l 

Educ. Ass’n, 629 F.3d 992, 998 (9th Cir. 2010). That presumption of truth, however, does not 

extend to legal conclusions couched as factual allegations. Ashcroft v. Iqbal, 556 U.S. 662, 678-

 

1 A computer processor typically includes at least one small, local memory area called a 

cache. Because the cache can be accessed more efficiently than main memory, the processor uses 

it to store a copy of the data upon which it is currently operating. After operations are concluded, 

the data in the cache is copied back to main memory. In a multiprocessor system, however, if 

two processors are operating upon the same underlying data, their cached copies can become 

inconsistent with each other. Multiprocessor systems therefore incorporate cache coherence

algorithms to prevent this from occurring. See Computer Cache Coherency Corp. v. Via Techs., 

Inc., 2008 WL 4369770, at *2 (N.D. Cal. Sept. 23, 2008).

2 A motion for judgment on the pleadings is “functionally identical” to a motion to 

dismiss for failure to state a claim, and both are therefore evaluated according to the same 

standards. See Cafasso, U.S. ex rel. v. Gen. Dynamics C4 Sys., Inc., 637 F.3d 1047, 1054 n.4 (9th 

Cir. 2011).

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 2 of 8
PAGE 3 – OPINION AND ORDER

79 (2009). The plaintiff “may not simply recite the elements of a cause of action, but must 

[provide] sufficient allegations of underlying facts to give fair notice and to enable the opposing 

party to defend itself effectively.” Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir. 2011). 

Furthermore, the underlying factual allegations must “plausibly suggest an entitlement to relief.” 

Baca, 652 F.3d at 1216 (emphasis added). “A claim has facial plausibility when the pleaded 

factual content allows the court to draw the reasonable inference that the defendant is liable for 

the misconduct alleged.” Iqbal, 556 U.S. at 663 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 

556 (2007)).

DISCUSSION

Both contributory infringement and induced infringement require scienter on the part of 

the defendant. This scienter standard is demanding because the law is “reluctan[t] to find liability 

when a defendant merely sells a commercial product suitable for some lawful use.” DSU Med. 

Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (en banc) (quoting Metro-GoldwynMayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005)). At the pleading stage, the 

patentee must provide factual allegations that “allow[] the court to draw the reasonable inference 

that the defendant” had the requisite scienter. See Iqbal, 556 U.S. at 663.

Accordingly, Intel argues that MI’s allegations of scienter are conclusory and without 

factual support. With respect to contributory infringement, Intel also argues that MI’s allegation

that the accused products have no substantial non-infringing uses is conclusory. The Court 

addresses each theory of secondary liability in turn.

A. Induced Infringement

The patent laws provide that “whoever actively induces infringement of a patent shall be 

liable as an infringer.” 35 U.S.C. § 271(b). “[A]ctive” inducement has three elements: knowledge

of the patent; knowledge that the induced acts will infringe; and “intent to ‘bring about the 

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 3 of 8
PAGE 4 – OPINION AND ORDER

desired result,’ which is infringement.” Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 

1925, 1928 (2015) (quoting Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2065 

(2011)) (emphasis added).

Each requirement is separate and distinct. Knowledge of the patent is straightforward:

Service of the complaint provides the defendant with notice of the patent’s existence, and 

knowledge of the patent as of the date of service is sufficient. Black Hills Media, LLC v. Pioneer 

Corp., 2013 WL 8540141, at *2 (C.D. Cal. Sept. 24, 2013) (citing In re Bill of Lading 

Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1345 (Fed. Cir. 2012)). The 

patentee need not, therefore, allege pre-suit knowledge of the patent. See id. Intel does not 

contest that this requirement is satisfied here.

In addition to knowledge of the patent, the patentee must allege that the defendant knew 

that the acts it was inducing would infringe the patent. See Commil, 135 S. Ct. at 1928. The latter 

may not merely be inferred from the former: The defendant may be aware of the patent, but “if 

[he] reads the patent’s claims differently from the plaintiff, and that reading is reasonable,” then 

he lacks the scienter required for inducement liability. Id. Both knowledge requirements may be 

met by an allegation of willful blindness. Global-Tech, 131 S. Ct. at 2069.

The final element, specific intent to encourage infringement, “can be shown by 

circumstantial evidence, but the mere knowledge of possible infringement will not suffice.” VitaMix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009). Thus, that a product 

may be used in an infringing manner is not sufficient to establish intent. Id. at 1328-29. Nor is 

actual knowledge that some users of the product may be infringing the patent. Id. at 1329. On the 

other hand, instructions that “teach an infringing use” of the product may be sufficient to infer 

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 4 of 8
PAGE 5 – OPINION AND ORDER

“an affirmative intent to infringe the patent.” See id. n.2. What the patentee must allege is

“culpable conduct, directed to encouraging another’s infringement.” DSU, 471 F.3d at 1306.

Here, Intel challenges the sufficiency of MI’s allegations regarding specific intent. MI 

alleges that Intel “actively aid[ed] and abett[ed] others (including its direct and indirect 

customers)” in infringing its patents and that Intel acted “with either the specific intent to cause 

infringement or with willful blindness to the infringement that it is causing.” First Amended 

Complaint (Dkt. 61, hereinafter “FAC”) ¶ 21.3Those assertions, however, are precisely the sort 

of legal conclusions couched as factual allegations that are insufficient to sustain a claim under 

Iqbal, 556 U.S. at 678-79. MI also provides an example of how Intel’s products can be used in an 

infringing manner. FAC ¶ 21. At most, however, that establishes that Intel’s products permit an 

infringing use, not that Intel’s conduct is in any way culpable. Cf. DSU, 471 F.3d at 1306.

In addition, MI alleges that Intel “provid[ed] instructions and technical support regarding

use of the [accused products], where the use of the [accused products] during normal operation 

by Intel’s customers infringes” MI’s patents. FAC ¶ 21. MI does not allege, however, that Intel’s 

instructions and support “teach an infringing use” of its products. Cf. Vita-Mix, 581 F.3d at 1328. 

Nor does MI allege that Intel “advertises or promotes its product for use in an infringing 

manner.” Cf. Johnstech Int’l Corp. v. JF Tech. Berhad, 2015 WL 2062223, at *2 (N.D. Cal. 

May 1, 2015).

Indeed, MI pleads no specific facts regarding the instructions and technical support 

provided by Intel—certainly nothing sufficient to permit the inference that Intel specifically 

 

3

These allegations concern the ’121 patent; identical or substantially similar allegations 

concerning the ’636, ’409, ’206, and ’254 patents appear in paragraphs 27, 33, 39, and 45, 

respectively. Each paragraph can be analyzed in the same way.

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 5 of 8
PAGE 6 – OPINION AND ORDER

intended that its customers use its products in an infringing manner.4 Cf. Synopsys, Inc. v. 

ATopTech, Inc., 2013 WL 5770542, at *16 (N.D. Cal. Oct. 24, 2013) (“Plaintiff could, for 

example, have pled facts as to how Defendant’s design or instruction were meant to induce or 

encourage Defendant . . . .”); Unisone Strategic IP, Inc. v. Life Techs. Corp., 2013 WL 5729487, 

at *3 (S.D. Cal. Oct. 22, 2013) (similar); see also Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 

1301, 1320 (Fed. Cir. 2009) (observing that without “specific instructions on how to use the 

[infringing] features,” there is no § 271(b) liability). In the absence of such factual support, the 

FAC does not give Intel fair notice or enable Intel to defend itself effectively. Cf. Starr, 652 F.3d 

at 1216. Intel is therefore entitled to judgment in its favor on MI’s induced-infringement claims.

B. Contributory Infringement

The patent laws also provide that one who supplies to others a “material part” of a 

patented invention, “knowing the same to be especially made or especially adapted for use in an 

infringement of such patent, and not a staple article or commodity of commerce suitable for 

substantial noninfringing use,” is liable for contributory infringement. 35 U.S.C. § 271(c). 

Contributory liability requires knowledge “that the [use] for which [the] component was 

especially designed was both patented and infringing.” Aro Mfg. Co. v. Convertible Top 

Replacement Co., 377 U.S. 476, 488 (1964) (emphasis added). The knowledge required for 

 

4

In Part B, this Court holds that MI has sufficiently alleged that the accused products 

have no substantial noninfringing use. MI has cited language from the Federal Circuit that 

suggests that that holding necessarily implies an affirmative intent to infringe. See Ricoh Co. v. 

Quanta Computer Inc., 550 F.3d 1325, 1338 (Fed. Cir. 2008) (“[I]t is entirely appropriate to 

presume that one who sells a product containing a component that has no substantial 

noninfringing use in that product does so with the intent that the component will be used to 

infringe.”). That language, however, is excerpted from a contributory-infringement analysis. It is 

true that the contributory-infringement framework substitutes the no-substantial-noninfringinguse element for a specific-intent-to-infringe element. Active inducement, however, does require 

specific intent. See id. at 1340 (“Unlike contributory infringement, induced infringement liability 

. . . requires . . . an affirmative intent to cause direct infringement.” (quotation marks omitted)).

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 6 of 8
PAGE 7 – OPINION AND ORDER

contributory liability is thus similar to the knowledge required for inducement liability. See

Global-Tech, 131 S. Ct. at 2067.

Unlike induced infringement, however, contributory infringement does not have a 

specific-intent element. Unisone Strategic IP, Inc. v. Life Techs. Corp., 2013 WL 5729487, at *4 

(S.D. Cal. Oct. 22, 2013). Instead, on the theory that “[o]ne who makes and sells articles which 

are only adapted to be used in a patented combination will be presumed to intend the natural 

consequences of his acts,” contributory liability requires that the accused component have no 

“substantial noninfringing use.” See Grokster, 545 U.S. at 932 (quotation marks omitted). Intel 

accordingly argues that MI’s allegations that the accused products have no substantial 

noninfringing use are not supported by sufficient factual allegations.

“Substantial” noninfringing uses are those that are not “not unusual, far-fetched, illusory, 

impractical, occasional, aberrant, or experimental.” Vita-Mix, 581 F.3d at 1327. Here, MI has 

alleged that “during normal operation,” the accused products directly infringe its patents. FAC 

¶ 22.5 Moreover, MI has identified specific components—a “Cache Box” and “Core Valid 

bits”—that allegedly perform the infringing activities. Id. MI alleges that these components’ 

“only purpose” is to execute algorithms that infringe its patents. Id. Identifying specific 

components of a product, explaining how they infringe, and alleging that they cannot be used but 

to infringe is sufficient to support a claim that the product has no substantial noninfringing use.

MI has, therefore, supported this element of its claim with sufficient underlying factual 

allegations.

 

5

These allegations concern the ’121 patent; identical or substantially similar allegations 

concerning the ’636, ’409, ’206, and ’254 patents appear in paragraphs 28, 34, 40, and 46, 

respectively. Each paragraph can be analyzed in the same way.

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 7 of 8
PAGE 8 – OPINION AND ORDER

Intel also argues that MI has not pled sufficient factual support for its allegation that Intel 

knew that the accused products were especially designed to infringe MI’s patents. Intel does not 

contest, however, that it knew of the patents at least as of the date of service of the complaint.6

For each patent, the complaint provides at least one theory on which the accused products 

infringe the patent. That is sufficient to infer that Intel knew that the use for which the accused 

products were especially designed “was both patented and infringing.” Cf. Aro, 377 U.S. at 488. 

Although Intel may argue on summary judgment or at trial that it reasonably read MI’s patents 

not to cover the accused products, see Commil, 135 S. Ct. at 1928, at the pleading stage, MI need 

not prove that its construction of its patents is the only reasonable one. Intel is therefore not 

entitled to judgment in its favor on MI’s contributory-infringement claims.

CONCLUSION

Intel’s motion for partial judgment on the pleadings (Dkt. 85) is GRANTED with respect 

to MI’s induced-infringement claims and DENIED with respect to MI’s contributoryinfringement claims. Because “the pleading could . . . possibly be cured by the allegation of other 

facts,” the Court grants MI leave to amend its pleadings within 14 days. Cf. Cook, Perkiss & 

Liehe, Inc. v. N. Cal. Collection Serv. Inc., 911 F.2d 242, 247 (9th Cir. 1990). MI’s claims for 

induced infringement are DISMISSED without prejudice.

IT IS SO ORDERED.

DATED this 13th day of July, 2015.

/s/ Michael H. Simon

Michael H. Simon

United States District Judge

 

6

For the ’254 patent, Intel was given notice in a letter from MI on January 9, 2015. FAC 

¶ 44.

Case 3:15-cv-00262-SI Document 98 Filed 07/13/15 Page 8 of 8