Flypsi, Inc. v. Google, LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

FLYPSI, INC., §

Plaintiff §

§ 6:22-CV-0031-ADA

-vs-

§

§

GOOGLE LLC,

Defendant §

§

§

MEMORANDUM OPINION AND ORDER

Came on for consideration this date is Google LLC’s (“Google”) Motion to Dismiss

Plaintiff Flypsi’s (“Flyp”) Willful and Indirect Infringement Claims. ECF No. 24 (the “Motion”).

Flyp filed an opposition on April 25, 2022 (ECF No. 37) to which Google replied on May 5,

2022 (ECF No. 38). After careful consideration of the Motion, the parties’ briefs, and the

applicable law, the Court GRANTS-IN-PART and DENIES-IN-PART Google’s Motion to

Dismiss WITHOUT PREJUDICE.

I. BACKGROUND

Flyp, a Delaware corporation with its principal place of business in Bedford, Texas, filed

suit on January 10, 2022, against Google, also a Delaware limited liability company. ECF No. 1

¶¶ 1–2 (the “Complaint”). Flyp’s Original Complaint alleged that Google has and continues to

infringe, contribute to the infringement of, and/or induce infringement of Flyp’s U.S. Patent Nos.

9,667,770 (the “’770 Patent”), 10,051,105 (the “’105 Patent”), 10,334,094 (the “’094 Patent”),

11,012,554 (the “’554 Patent”), and 11,218,585 (the “’585 Patent”) (collectively, the “Patents-in-

Suit”). Id. at 10.

Google filed this Motion urging the Court to dismiss Flyp’s pre- and post-suit indirect

and willful infringement claims, along with Flyp’s post-suit contributory infringement claims.

See generally ECF No. 24.

II. LEGAL STANDARD

A. Rule 12(b)(6) Failure to State a Claim

Federal Rule of Civil Procedure 12(b)(6) allows a party to move to dismiss an action for

failure to state a claim on which relief can be granted. In deciding a Rule 12(b)(6) motion to

dismiss for failure to state a claim, the court “accepts all well-pleaded facts as true, viewing them

in the light most favorable to the [nonmovant].” In re Katrina Canal Breaches Litig., 495 F.3d

191, 205 (5th Cir. 2007) (internal quotation marks omitted). The Supreme Court has explained

that a complaint must contain sufficient factual matter “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)). “A claim has facial plausibility when the [nonmovant] pleads factual

content that allows the court to draw the reasonable inference that the [movant] is liable for the

misconduct alleged.” Ashcroft, 556 U.S. at 678. “While a complaint attacked by a Rule 12(b)(6)

motion to dismiss does not need detailed factual allegations, a plaintiff’s obligation to provide

the grounds of his entitle[ment] to relief requires more than labels and conclusions, and a

formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555

(internal quotations and citations omitted). “Factual allegations must be enough to raise a right to

relief above the speculative level.” Id. The Court’s review is limited to the complaint, any

documents attached to the complaint, and any documents attached to the motion to dismiss that

are central to the claim and referenced by the complaint. Lone Star Fund V (U.S.), L.P. v.

Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir. 2010).

There are “[t]wo working principles” that a court must use in its pleading evaluations.

Ashcroft, 556 U.S. at 678. First, although “a court must accept as true all of the allegations

contained in a complaint,” that tenet does not extend to legal conclusions or “[t]hreadbare

recitals of the elements of a cause of action, supported by mere conclusory statements.” Id.

Second, “[d]etermining whether a complaint states a plausible claim for relief will . . . be a

context-specific task that requires the reviewing court to draw on its judicial experience and

common sense.” Id. at 678–79. Thus, in considering a motion to dismiss, the Court must initially

identify pleadings that are no more than legal conclusions not entitled to the assumption of truth,

then assume the veracity of well-pleaded factual allegations, and determine whether those

allegations plausibly give rise to an entitlement to relief. Datascape, Ltd. v. Dell Techs., Inc., No.

1:19-CV-00605-ADA, 2019 WL 5275533, at *1 (W.D. Tex. June 17, 2019).

B. Willful Infringement

Under Section 284 of the Patent Act, a court may increase damages for patent

infringement “up to three times the amount found or assessed.” 35 U.S.C. § 284. A party seeking

such “enhanced damages” must show that an infringer’s conduct has been “willful,” or “wanton,

malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a

pirate.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103–04 (2016). Enhanced damages

should “generally be reserved for egregious cases typified by willful misconduct.” Id. at 106.

To state a claim for relief for willful patent infringement, a plaintiff must allege facts

plausibly showing that the accused infringer: “(1) knew of the patent-in-suit; (2) after acquiring

that knowledge, it infringed the patent; and (3) in doing so, it knew, or should have known, that

its conduct amounted to infringement of the patent.” Parity Networks, LLC v. Cisco Sys., Inc.,

No. 6:19-CV-00207-ADA, 2019 WL 3940952, at *3 (W.D. Tex. July 26, 2019) (quoting Välinge

Innovation AB v. Halstead New Eng. Corp., No. 16-1082-LPS-CJB, 2018 WL 2411218, at *13

(D. Del. May 29, 2018)).

C. Induced Infringement

Section 271(b) of the Patent Act provides that “[w]hoever actively induces infringement

of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). To succeed on such a claim, the

patentee must show that the accused infringer (1) knowingly induced direct infringement and

(2) possessed “specific intent” to induce that infringement. See MEMC Electr. Materials, Inc. v.

Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005). Willful blindness can

satisfy the knowledge requirement, Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344,

1347 (Fed. Cir. 2016), and circumstantial evidence may suffice to prove specific intent, MEMC,

420 F.3d at 1378.

To state a claim for relief for induced patent infringement, “a complaint must plead facts

plausibly showing that the accused infringer ‘specifically intended [another party] to infringe

[the patent] and knew that the [other party]’s acts constituted infringement.’” Lifetime Indus.,

Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1376–77 (Fed. Cir. 2017) (quoting In re Bill of Lading

Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1336 (Fed. Cir. 2012)). “[T]here can

be no inducement or contributory infringement without an underlying act of direct

infringement.” Joao Control & Monitoring Sys., LLC v. Protect Am., Inc., No. 1:14-CV-00134-

LY, 2015 WL 3513151, at *3 (W.D. Tex. Mar. 24, 2015). “To state a claim for indirect

infringement . . . a plaintiff need not identify a specific direct infringer if it pleads facts sufficient

to allow an inference that at least one direct infringer exists.” In re Bill of Lading, 681 F.3d at

1336.

D. Contributory Infringement

Section 271(c) of the Patent Act provides that:

Whoever offers to sell or sells within the United States or imports

into the United States a component of a patented machine,

manufacture, combination or composition, or a material or

apparatus for use in practicing a patented process, constituting a

material part of the 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, shall be liable as a contributory

infringer.

35 U.S.C. § 271(c). Contributory infringement of a patented device involves the sale, offer to

sell, or importing of a component of the device, which is “not itself technically covered by the

claims of a product or process patent.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d

1464, 1469 (Fed. Cir. 1990). Unlike induced infringement, contributory infringement requires

“only proof of a defendant’s knowledge, not intent, that his activity cause[s] infringement.” Id.

(emphasis in original). But “[l]ike induced infringement, contributory infringement requires

knowledge of the patent in suit and knowledge of patent infringement.” Commil USA, LLC v.

Cisco Sys., Inc., 575 U.S. 632, 639 (2015).

To state a claim for contributory infringement, “a plaintiff must plausibly allege that the

accused infringer knew of the asserted patents . . . and must ‘plead facts that allow an inference

that the components sold or offered for sale have no substantial non-infringing uses.’” Artrip v.

Ball Corp., 735 F. App’x 708, 713 (Fed. Cir. 2018) (first citing Commil, 575 U.S. at 639; and

then quoting In re Bill of Lading, 681 F.3d at 1337).

III. ANALYSIS

Google argues that Flyp cannot state a plausible claim for pre-suit indirect and willful

infringement because Google lacked knowledge of the Patents-in-Suit prior to the filing of the

Complaint. ECF No. 24 at 4. Google also argues that Flyp is unable to plead facts sufficient to

state a plausible claim for post-suit indirect or willful infringement. Id. at 7. Last, Google

contends that Flyp’s allegations of post-suit contributory infringement are deficient. Id. at 8. The

Court takes each of these arguments in turn.

A. Flyp Has Not Sufficiently Pleaded Knowledge for Pre-Suit Willful and Indirect

Infringement.

To survive a motion to dismiss, Flyp must plead facts that support a finding of actual

knowledge of the patents, or willful blindness. Parity Networks, 2019 WL 3940952, at *3

(quoting Välinge, 2018 WL 2411218, at *13) (for willful infringement, a plaintiff must allege

facts plausibly showing that the accused infringer “(1) knew of the patent-in-suit; (2) after

acquiring that knowledge, it infringed the patent; and (3) in doing so, it knew, or should have

known, that its conduct amounted to infringement of the patent.”); see also MEMC Electr.

Materials, 420 F.3d at 1378 (stating that a patentee must show the accused infringer (1)

knowingly induced direct infringement and (2) possessed “specific intent” to induce that

infringement”). Here, Flyp relies on facts surrounding a meeting between Mr. Rich Miner of

Google Ventures and Mr. Peter Rinfret, Flyp’s founder and named-inventor. Those allegations

read as follows:

19. From 2012 until early 2017, Google made no major

revisions to Google Voice. Instead, according to industry

observers, Google let Google Voice languish in disrepair for five

years. (See https://gizmodo.com/five-years-later-google-finally-

remembers-google-voice-1791532022 (“Unfortunately, over the

years, Google let the nifty little voice service fall into relative

disrepair—until today, that is. For the first time in five—yes,

five—years, Google Voice is getting a major UI update.”)

20. In the interim, Mr. Rich Miner, general partner at GV

(formerly Google Ventures) requested and scheduled a meeting

with Flyp’s founder and named-inventor, Peter Rinfret. The

meeting requested by Google Ventures occurred on November 12,

2015, during which Mr. Miner and Mr. Rinfret discussed Flyp’s

technology, business, and patent filings.

21. A little more than one year later, in January 2017, Google

updated Google Voice. In addition to user-interface improvement,

the revised Google Voice employed new call mechanisms that

infringe Flyp’s Asserted Patents.

ECF No. 1 ¶¶ 19–21.

Flyp argues that considering the above facts in the light most favorable to Flyp, the Court

can infer “that Google either knew about the Asserted Patents when they issued or was willfully

blind to their existence.” ECF No. 37 at 5. Specifically, Flyp invites the Court to “infer that

Google, a sophisticated party that sent a high-level executive to inspect Flyp’s technology and

pending applications, and then incorporated Flyp’s technology into its Google Voice product,

would have tracked those pending applications and been aware of the Asserted Patents—or it

was willfully blind to their existence if it buried its head in the sand after copying the technology

disclosed in them.” Id. at 5–6. Flyp heavily relies on Simplivity Corp. v. Springpath, Inc., No.

CV 4:15-13345-TSH, 2016 WL 5388951 (D. Mass. July 15, 2016), arguing that the case is

analogous to the facts in this case as both share competitors and investigations of the patentee’s

technology before the issuance of the asserted patents, followed by a commercial product release

that incorporates the patentee’s patented technology. ECF No. 37 at 5.

Google challenges the sufficiency of Flyp’s arguments on reply, insisting that Flyp fails

to allege “willful blindness” or facts to support an inference of “actual knowledge.” ECF No. 38

at 2. Underlying each of these arguments, Google argues that Flyp also fails to address that Mr.

Miner was a general partner at Google Venture, who is not a defendant in this action. Id. at 3.

Flyp improperly asks the Court to impute his knowledge to Google but fails to allege an “alter

ego” theory or “grounds to pierce Google’s corporate veils.” Id. Thus, Google insists that it is

facially implausible to infer that knowledge of Flyp’s pending patent applications by a non-

Google employee equates to knowledge by Google of the issued patents. ECF No. 24 at 1.

The Court finds that Flyp has failed to meet its pleading burden as to pre-suit knowledge

of the patents because Flyp fails to plead facts that support a willful blindness theory, no facts are

alleged that support Google’s actual knowledge, and Flyp does not allege facts that sufficiently

allow for an inference to impute any knowledge Mr. Miner allegedly has to Google.

The Supreme Court identified two basic requirements to appropriately limit the scope of

willful blindness to one that “surpasses recklessness and negligence.” Those requirements

include: “(1) The 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 Appliances, Inc. v. SEB S.A., 563 U.S. 754, 770 (2011). Thus, “a willfully blind defendant

is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and

who can almost be said to have actually known the critical facts.” Id. at 769. Flyp’s allegations

do not meet this standard. Flyp’s allegations do not address any policies or actions by Google

such that it took deliberate actions to avoid learning of the issuance of the Patents-in-Suit.

Instead, Flyp asks this Court to draw an inference that because Mr. Miner, of Google Ventures,

sought a meeting with Mr. Rinfret to discuss non-specific technology, business, and patent

filings, Google’s later implementations in a January 2017 update necessarily infringe and

illustrate actions to remain willfully blind to the existence of the Patents-in-Suit. This is a stretch

too far. No facts are alleged that the discussions specifically centered on the Patents-in-Suit, nor

that Google chose not to monitor the patent filings. Importantly, nothing indicates that Google

was willfully blind to the patent filings. This is an important distinction from the Simplivity case,

where the founder of the defendant was alleged to have asked a number of specific engineering-

related questions without disclosing his identity. 2016 WL 5388951, at *2.

Flyp’s arguments regarding actual knowledge are similarly deficient. None of the

allegations allege that Google had actual knowledge of the patents. And knowledge of patent

applications generally without more is insufficient to satisfy the knowledge requirement. See,

e.g., State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) (“To willfully

infringe a patent, the patent must exist and one must have knowledge of it.”) (emphasis in

original). Of course, knowledge of patent filings alone does not establish a per se rule against

knowledge of the patents sufficient for a willful or induced infringement claim. See WCM Indus.,

Inc. v. IPS Corp., 721 F. App’x 959, 970 (Fed. Cir. 2018). In fact, “a party’s exposure to a patent

application may give rise to knowledge of a later issued patent.” Maxell Ltd. v. Apple Inc., No.

5:19-CV-00036-RWS, 2019 WL 7905455, at *5 (E.D. Tex. Oct. 23, 2019). Here, Flyp provides

allegations that tell a compelling story. Indeed, such allegations could typify a sufficient

inference of actual knowledge if the actual defendant was aware of the patent filings. Here, the

deficiency lies in a failure to allege Google’s actual knowledge of either the patents or the patent

filings. Additionally, only the ’770 Patent, at the time of the meeting U.S. Application No.

14/307,052, was pending. The remaining Patents-in-Suit were filed about one and a half to five

and a half years after the November 12 meeting. Flyp fails to provide allegations regarding

knowledge of the remaining Patents-in-Suit. Therefore, no reasonable inferences can be drawn

that Google knew of the ’770 Patent, much less the remaining Patents-in-Suit.

Google’s final argument is that Google Ventures and Google are distinct corporate

entities and that Mr. Miner’s knowledge cannot be imputed absent an alter ego theory, which is

not pleaded in the Complaint. But this is not necessarily required. See Frac Shack Inc. v. AFD

Petroleum (Tex.) Inc., No. 7:19-CV-00026-DC, 2019 WL 3818049, at *4 (W.D. Tex. June 13,

2019) (finding that “Plaintiff has sufficiently articulated facts from which a finder of fact could

conclude that this knowledge was imputed to all the other Defendants through the common

ownership and governance of each company” for a motion to dismiss claims of indirect

infringement); Hockerson-Halberstadt, Inc. v. JSP Footwear, Inc., 104 F. App'x 721, 725 (Fed.

Cir. 2004) (reversing summary judgment that notice could not be imputed, further clarifying that

such an “outcome could create a perverse incentive and method to disguise the true identity of an

infringing party” and that “[s]everal layers of corporate disguise could successfully frustrate

adequate notice”); Mobile Telecomms. Techs., LLC v. Blackberry Corp., No. 3:12-CV-1652-M,

2016 U.S. Dist. LEXIS 55206, at *7–8 (N.D. Tex. Apr. 26, 2016) (holding that “the specific

facts establishing that knowledge may be imputed” did not need to “be alleged in order to avoid

dismissal at the pleading stage”); Canon, Inc. v. TCL Elecs. Holdings Ltd., No. 2:18-CV-00546-

JRG, 2020 U.S. Dist. LEXIS 52162, at *15–16 (E.D. Tex. Mar. 25, 2020) (holding that

allegations of infringement against “Defendants,” encompassing related entities, was sufficient to

provide “fair notice” of the claims). However, as is clear in each of the above-cited cases, the

pleadings always referenced at least a relationship between the non-party and named defendants

sufficient to create a reasonable inference for knowledge to be imputed from one to another.

Here, the pleadings provide nothing regarding the relationship between Google Ventures and

Google, or how said knowledge could be imputed from Mr. Miner to Google. In the absence of

any of these factual allegations, the Court cannot reasonably infer that Mr. Miner’s meeting with

Flyp creates knowledge by Google of the Patents-in-Suit.

This Court recently found that a notice letter to one entity was sufficient to impute

knowledge to the remaining entities, given the plaintiff’s pleadings. See ACQIS LLC v. Lenovo

Grp. Ltd., No. 6:20-CV-00967-ADA, 2022 WL 2705269, at *7 (W.D. Tex. July 12, 2022).

However, the pleadings in ACQIS contain a determinative difference to Flyp’s: ACQIS pleaded

that the defendants were “a multinational conglomerate that operates under the name ‘Lenovo.’”

Id. Here, the closest Flyp gets to attributing knowledge between Mr. Miner and Google is in ¶ 33

of the Complaint, which states: “On information and belief, Google had knowledge of Flyp, its

patent applications, and/or its issued patents at least as early as November 12, 2015. On that date,

Rich Miner, general partner at GV (formerly Google Ventures) and co-founder of Android, met

with Flyp to discuss its technology, business, and patent filings on November 12, 2015. In

addition, Google received actual notice of the ʼ770 Patent at least as early as the filing of this

Original Complaint.” But the Court will not entertain inferential connections between two

companies without proper allegations of how the knowledge would flow from one to another.

Aside from a common name, Flyp fails to plead the relationship between the two, requiring this

Court to speculate beyond a reasonable inference.

B. Flyp’s Post-Suit Claims For Indirect and Willful Infringement are sufficiently

pleaded.

“Serving a complaint will, in most circumstances, notify the defendant of the asserted

patent and the accused conduct. So long as the complaint also adequately alleges that the

defendant is continuing its purportedly infringing conduct, it will satisfy all three Parity elements

and sufficiently plead a post-filing/post-suit willful infringement claim.” BillJCo, LLC v. Apple

Inc., No. 6:21-CV-00528, 2022 WL 299733, at *4 (W.D. Tex. Feb. 1, 2022). Google maintains

that Flyp relies solely on the Complaint to establish Google’s post-suit knowledge of the Patents-

in-Suit. Google argues the Complaint alone is insufficient to give rise to the reasonable inference

required to survive a motion to dismiss. This Court disagrees. As noted above, serving a

complaint has been found to be sufficient to establish post-suit knowledge of issued patents. This

conclusion is not a novel one. Id. Because Flyp adequately pleaded that the Complaint provided

Google with knowledge of the Patents-in-Suit, the Court finds that it has met its burden. ECF

No. 1 ¶¶ 33, 36, 45, 48, 57, 60, 72, 75, 86, 89. Google also argues that Section VII of the Court’s

Order Governing Proceedings in Patent Cases (the “OGP”) eliminates the practical issue of

knowledge provided by a complaint. But this Court’s OGP did not eliminate post-suit indirect or

willful infringement claims. Instead, the purpose was to provide the parties the ability to avoid

motion practice to dismiss such claims and bring them after fact discovery when additional facts

are available to substantiate the claims. But not every willfulness or indirect claim requires

discovery to meet the necessary pleading standard. Here, Plaintiff provides a compelling story

that falls just shy of the standard. And discovery is likely unnecessary to substantiate post-suit

willfulness and indirect infringement claims as the Complaint generally satisfies all three Parity

elements. Google’s arguments regarding the OGP are misplaced.

C. Flyp’s Pleadings of Contributory Infringement are Deficient.

Google further moves that Flyp’s contributory infringement claim be dismissed on the

grounds that Flyp (1) does not sufficiently allege that the accused functionality is either a

component or a material part of the claimed invention and (2) does not sufficiently allege that the

accused functionality has no substantial non-infringing uses. ECF No. 24 at 9. Google maintains

that Flyp merely provides threadbare recitals of the elements of a contributory infringement

claim.

Flyp argues that its allegations support a “reasonable inference that the accused

functionality is a component or material part of the claimed invention.” ECF No. 37 at 9. Flyp

argues that its descriptions of the inventions and the solutions they provided include material

functionality, such as “server-side functionality through hardware and software that route calls

according to the patents through switches and servers that Google provides or controls.” Id. at 9–

10 (citing ECF No. 1 ¶¶ 39–40, 51–52, 65–66, 78–99). Flyp further argues that the surrounding

context of the allegations in the Complaint supports sufficient pleading for “no substantial non-

infringing uses.” The Complaint “incorporates instructions from Google to its users on how to

use the accused functionality, all of which are directed to infringing use.” Id. at 10.

Flyp’s allegations of contributory infringement recite as follows:

Upon information and belief, Google indirectly infringes the

[Patents-in-Suit] by . . . contributing to infringement by others,

such as resellers, partners, and end-user customers. Upon

information and belief, direct infringement is (1) the result of

activities performed by resellers, partners, and end-user customers

of Google Voice, who perform each step of the claimed invention

as directed by Google, or (2) the result of activities performed by

resellers, partners, and end-user customers of Google Voice in a

normal and customary way that infringes the [Patents-in-Suit], that

has no substantial non-infringing uses, and that is known by

Google.

ECF No. 1 ¶¶ 32, 44, 56, 71, 85.

Given this Court’s ruling on lack of knowledge both pre- and post-suit, the outstanding

question is whether Flyp’s post-suit contributory infringement claims serve as currently pleaded.

To state a claim for contributory infringement, “a plaintiff must plausibly allege that the accused

infringer knew of the asserted patents . . . and must ‘plead facts that allow an inference that the

components sold or offered for sale have no substantial non-infringing uses.’” Artrip v. Ball

Corp., 735 F. App’x at 713 (first citing Commil, 575 U.S. at 639; and then quoting In re Bill of

Lading, 681 F.3d at 1337). This Court previously held that a plaintiff must also “allege that the

defendant’s accused product is material to practicing the claimed invention.” Modern Font Apps.

LLC v. Red Lobster Hosp. LLC, No. 6:21-CV-00470-ADA, slip op. at 7 (W.D. Tex. Jan. 28,

2022). Accordingly, the Court must determine whether Flyp sufficiently pleads materiality and

no substantial non-infringing uses. The Court holds that Flyp’s Complaint satisfies the latter

element, but not the former.

Flyp’s pleadings suffice to show that the components sold or offered for sale have “no

substantial non-infringing uses.” Unlike the facts in BillJCo, where the plaintiff made wholly

conclusory statements alleging that iPhones and iPads have no substantial non-infringing uses

and failing to focus its allegations on any specific components, see BillJCo, 2022 WL 299733, at

*9, Flyp’s allegations are targeted to a “long-standing problem with the Google Voice product.”

ECF No. 1 ¶¶ 12, 20–21. Google’s pleading demands place a heavy and unnecessary burden on

Flyp to prove a negative in its pleadings—more than is required by the Federal Circuit. See

Merck Sharp & Dohme Corp. v. Teva Pharm. USA, Inc., No. 14-874-SLR-SRF, 2015 WL

4036951, at *7 (D. Del. July 1, 2015) (citing In re Bill of Lading, 681 F.3d at 1339) (“The

Federal Circuit has ruled that affirmatively pleading the absence of substantial non-infringing

uses renders the claim plausible if the pleadings do not undermine that allegation.”); see also

Driessen v. Sony Music Entm't, No. 2:09-CV-0140-CW, 2013 WL 4501063, at *2 (D. Utah Aug.

22, 2013) (denying motion to dismiss and concluding that a plaintiff is not required “to plead a

null set under the plausibility standard of Twombly and Iqbal—that it is impossible to plead with

specificity something that does not exist.”).

However, Flyp fails to address materiality. Flyp’s response provides ample citations to

the Complaint, but each of cited allegations simply summarize the functionality recited in the

claims of the Patents-in-Suit. See, e.g., ECF No. 1 ¶¶ 39–40, 51–52, 65–66, 78–99. They do not,

as is required, address whether Google Voice constitutes a material part of the invention of the

Patents-in-Suit. The inferences Flyp requests this Court make are a stretch too far but can be

easily corrected with amended pleadings. It is notable that Flyp filed its Complaint without the

benefit of this Court’s order in Modern Font v. Red Lobster. With the benefit of this Court’s

order recognizing the need for materiality, the Court will grant leave to Flyp to amend and nudge

its pleadings across the line to specifically allege materiality.

IV. CONCLUSION

For the foregoing reasons, the Court GRANTS-IN-PART and DENIES-IN-PART

Google’s Motion to Dismiss. The Court DENIES Google’s Motion to Dismiss as to Flyp’s post-

suit indirect and willful infringement claims. The Court GRANTS Google’s Motion to Dismiss

as to Flyp’s contributory and pre-suit indirect and willful infringement claims.

But the Court recognizes that it may be impossible for Flyp to allege Google’s pre-suit

knowledge without the benefit of fact discovery. So, in accordance with the Court’s usual

practice, the Court permits Flyp to amend its Complaint after the start of fact discovery and

before the deadline for amended pleadings to re-plead contributory infringement and pre-suit

indirect and willful infringement claims, if able.

SIGNED this 22nd day of August, 2022.

AEA ALB T

UNITED STATES DISTRICT JUDGE

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