IP Law Daily, PATENT—E.D. Tex.: Google obtains dismissal of pre-suit indirect and willful infringement claims, (Dec 17, 2024)

By Kevin M. Finson

Claims for pre-suit indirect and willful infringement were dismissed because the patentee failed to allege Google’s pre-suit knowledge of the patents at issue.

A patentee did not state claims against Google for pre-suit indirect or willful infringement of several network content delivery patents, the U.S. District Court in Marshall has held. The patentee conceded that it did not allege pre-suit knowledge and indicated instead that it was pursing only post-suit claims as to the patents at issue, (Advanced Coding Technologies LLC v. Google LLC, No. 2:24-cv-00353-JRG (E.D. Tex. Dec. 13, 2024)).

Advanced Coding Technologies, LLC (ACT) brought suit against Google, LLC (Google) for direct, indirect, and willful infringement of U.S. Patents Nos. 8,090,025 (the ’025 patent), 9,986,303 (the ’303 patent), 10,218,995 (the ’995 patent), 9,042,448 (the ’448 patent”), 8,230,101 (the ’101 patent), and 7,804,891 (the ’891 patent). The accused products included “Google’s systems that perform network content delivery, including YouTube, which utilize one or more video codecs for network content delivery,” Google Cloud Content Delivery Network, and Google Smart Home. Google moved to dismiss the claims of indirect infringement of the ’101 and ’891 patents and willful infringement of the ’101 patent.

Induced infringement. Google argued that ACT had failed to allege Google possessed the requisite knowledge of the asserted patents to support indirect infringement claims of any sort, and that ACT failed to plead facts to show it induced infringement. ACT conceded that it did not plead pre-suit knowledge and sought only remedies for post-suit conduct. The court dismissed the claim for pre-suit damages but held that ACT’s allegations that Google continued providing third parties with instructions and documentation on how to use infringing technology after receiving notice of the suit were sufficient to state a claim for post-suit induced infringement.

Contributory infringement. Google argued that ACT’s allegations that the accused products were especially adapted for infringement or lacked substantial non-infringing uses were conclusory recitations of the elements, rather than specific factual allegations. The court held that ACT had properly identified the accused product, which included Google’s Cloud Delivery Network and Google Smart Home, and had explained “in considerable detail” how the specific functionalities of these products correlated to the asserted patents. It was reasonable to infer from this close correlation that there was no other, non-infringing, use at least at the motion to dismiss stage.

Willful infringement. As to the ’101 patent, Google again argued that ACT failed to allege pre-suit knowledge of the patent and knowledge that its products infringed. ACT again conceded that it did not plead pre-suit knowledge and rested on post-suit conduct. The court held that the allegation that Google continued infringing the ’101 patent after receiving notice of the lawsuit was sufficient to state a claim for willful post-suit infringement and dismissed any claim for pre-suit infringement.

The court granted the motion to dismiss as to pre-suit induced and contributory infringement of both patents and pre-suit willful infringement of the’101 patent, but denied it as to post-suit claims.

The Case is No. 2:24-cv-00353-JRG.

Judge: Gilstrap, R.

Attorneys: Alfred Ross Fabricant (Fabricant LLP) for Advanced Coding Technologies LLC. Douglas E. Lumish (Latham & Watkins LLP) for Google LLC.

Companies: Advanced Coding Technologies LLC; Google LLC

Cases: Patent TexasNews