Preservation Technologies LLC v. MindGeek USA Inc. et al

MEMORANDUM in Opposition to NOTICE OF MOTION AND MOTION to Dismiss Case 92

C.D. Cal.January 21, 2019

PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Douglas Q. Hahn, California Bar No. 257559 dhahn@sycr.com Salil Bali State Bar No. 263001 sbali@sycr.com STRADLING YOCCA CARLSON & RAUTH, P.C. 660 Newport Center Drive, Suite 1600 Newport Beach, CA 92660-6422 Telephone: (949) 725-4000 Fax: (949) 725-4100 Victor G. Hardy (admitted pro hac vice) vhardy@hpylegal.com William M. Parrish (admitted pro hac vice) bparrish@hpylegal.com R. Floyd Walker (admitted pro hac vice) fwalker@hpylegal.com HARDY PARRISH YANG, LLP Spicewood Business Center 4412 Spicewood Springs Rd., Suite 202 Austin, Texas 78759 Phone: (512)520-9407 Attorneys for Plaintiff Preservation Technologies LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA PRESERVATION TECHNOLOGIES LLC, Plaintiff, v. MINDGEEK USA, INC., ET AL., Defendants. Civil Action No: 2:17-cv-08906-DOC-JPR PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS [92] Hearing: February 11, 2019 @8:30 a.m. Honorable Judge David O. Carter Courtroom: 9D Jury Trial Demanded Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 1 of 30 Page ID #:2708 -i- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS TABLE OF CONTENTS ....................................................................................... i TABLE OF AUTHORITIES ................................................................................ ii PRELIMINARY STATEMENT........................................................................... 1 I. Legal Standards ............................................................................................ 2 II. The TAC Properly Pleads Direct Infringement ........................................... 3 III. The Doctrine of Equivalents Does Not Require Separate Allegations ........ 7 IV. The TAC Properly Pleads Indirect Infringement ......................................... 8 V. The TAC Properly Pleads Willful Infringement ........................................ 11 VI. Defendants’ Limitation by Limitation Arguments Lack Merit and Demonstrate that the Complaint Adequately Pleads Infringement. ........... 12 A. ’014 Patent ......................................................................................... 13 B. ’499 Patent ......................................................................................... 17 C. ’080 Patent ......................................................................................... 18 D. ’831 Patent ......................................................................................... 18 E. ’495 Patent ......................................................................................... 18 F. ’537 Patent ......................................................................................... 20 G. ’060 Patent ......................................................................................... 21 H. ’527 Patent ......................................................................................... 22 I. ’911 Patent ......................................................................................... 22 J. ’071 Patent ......................................................................................... 23 K. ’638 Patent ......................................................................................... 24 VII. Any Dismissal Should be without Prejudice .............................................. 25 Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 2 of 30 Page ID #:2709 -ii- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Cases Applera Corp. v. MJ Research Inc., 389 F. Supp .2d 344 (D. Conn. 2005) ............................................................. 11 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ...................................................................................... 3, 4 Auburn Univ. v. IBM, 864 F. Supp. 2d 1222 (M.D. Ala. 2012) ............................................................ 7 Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) ......................................................................................... 3 Creagri, Inc., v. Pinnaclifie Inc., 2012 WL 5389775 (N.D. Cal. Nov 2, 2012) ..................................................... 7 Crypto Research, LLC v. Assa Abloy, Inc., 236 F. Supp. 3d 671 (E.D.N.Y. 2017) ............................................................... 8 Cywee Group Ltd. v. Huawei Device Co, Ltd., 2018 WL 3819392 (E.D. Tex. Aug. 10, 2018) .............................................. 5, 6 Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256 (Fed. Cir. 2018) ......................................................................... 6 DRG-Int’l, Inc., v. Bachem Americas, Inc., 2016 WL 3460791 (C.D. Cal. Jan. 5, 2016) .................................................. 3, 4 DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) ......................................................................... 8 e.Digital Corp. v. iBaby Labs, Inc., 2016 WL 4427209 (N.D. Cal. Aug. 22, 2016) .................................................. 3 Erickson v. Pardus, 551 U.S. 89 (2007) ............................................................................................ 3 Faulkner v. ADT Sec. Servs., Inc., 706 F.3d 1017 (9th Cir. 2013) ........................................................................... 3 Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 3 of 30 Page ID #:2710 -iii- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Gracenote, Inc. v. Sorenson Media, Inc., 2017 WL 2116173 (D. Utah May 15, 2017) ............................................... 7, 11 Intellectual Ventures I LLC v. Toshiba Corp., 66 F. Supp. 3d 495 (D. Del. 2014) .................................................................. 21 K-Tech Telecomm., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277 (Fed. Cir. 2013) ......................................................................... 7 Macronix Int’l. Co., Ltd. v. Spansion Inc., 4 F. Supp. 3d 797 (E.D. Va. Mar. 10, 2014) ..................................................... 7 N. Star Innovations, Inc. v. Micron Techs., Inc., 2017 WL 5501489 (D. Del. Nov. 16, 2017) ..................................................... 4 Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337(Fed. Cir. 2018) .......................................................... 3, 6, 12, 21 TeleSign Corp. v. Twilio, Inc., 2016 WL 4703873 (C.D. Cal. Aug. 3, 2016) .................................................... 2 Unilin Beheer B.V. v. Tropical Flooring, 2014 WL 2795360 (C.D. Cal. June 13, 2014) ................................................... 8 Versata Software, Inc. v. Calidus Software Inc., 944 F. Supp. 2d 357 (D. Del. 2013) ................................................................ 10 Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 4 of 30 Page ID #:2711 -1- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PRELIMINARY STATEMENT Plaintiff hereby responds to Defendants’ Motion to Dismiss (Dkt. 92) (the “Motion”). Defendants’ Motion, among other things, challenges Plaintiff’s Third Amended Complaint (Dkt. 87) (“TAC” or “Complaint”) on the grounds that it sets forth insufficient “evidence” in view of various claim interpretations offered by the Defendants (collectively “MindGeek”). Not only is this Motion premised on a fallacious understanding that a complaint must prove the plaintiff’s case with “evidence” rather than contain factual allegations to give notice of claims, Defendants’ challenge to evidence based upon claim interpretations is essentially an improper motion for summary judgment, couched as a motion to dismiss, thereby violating the Scheduling Order’s date for submitting one and only one such motion. Defendants’ attempt at filing an early summary judgment should count against their limit. Should the Court entertain Defendants arguments of this nature, Plaintiff requests an opportunity to brief the claim construction issues raised by this motion, submit evidence in the form of declarations, and have a hearing of the type typically afforded to motions for summary judgment. In any event, Defendants’ motion should be denied as the allegations in the TAC go well beyond what is required Defendants make several misrepresentations that require immediate correction. First, Defendants falsely claim that Preservation’s “entire infringement argument” fits into less than thirty pages. (Mot. at 1). Preservation’s infringement allegations span 184 pages (240 paragraphs) detailing multiple theories of direct and indirect infringement. Although claim charts are not required, Plaintiff’s complaint includes claim charts that include: (1) screenshots of specific infringing features of the Accused Websites; (2) computerized instructions (e.g., scripts) of queries and interfaces of the Accused Websites; (3) server identifications of the Accused Websites and Third parties; and (4) explanatory text and factual allegations as to how they meet each limitation. If Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 5 of 30 Page ID #:2712 -2- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants do not understand the claims against them, they are simply not trying. Second, Defendants incorrectly presume that the TAC is obligated to explain in detail every instance of infringement. The standard for sustaining a count for patent infringement is that the complaint provide fair notice of at least one claim. See, e.g., TeleSign Corp. v. Twilio, Inc., 2016 WL 4703873 at *3 (C.D. Cal. Aug. 3, 2016). Plaintiff has given Defendants fair notice of their infringing activities consisting of factual allegations, evidence and explanation with respect to at least one claim of each of the Patents-in-suit. Third, Defendants claim that Preservation has failed three times to make a plausible infringement case. (Mot. at 1). However, Defendants did not challenge the sufficiency of Plaintiff’s infringement allegations until after the Second Amended Complaint (“SAC”), never raising any of these issues with any specificity in the prior meet and confers that led to the previous amendments. In fact, prior to filing it, Plaintiff offered to provide Defendants a draft of the TAC for review. Defendants refused to even look at the Complaint before filing— demonstrating that Defendants are more interested in motion practice then the notice provided by the TAC See Nov. 16, 2018 Brooks E-mail attached as Exhibit 1 (“[W]e also do not think reviewing a draft TAC in advance of your filing makes sense”). It is also worth noting that the arguments in the present Motion were not raised in Defendants’ prior motions to dismiss (Dkts. 40, 52). Thus, Defendants had been willing to answer Plaintiff’s prior complaints as written. See FRCP 12(g)(2) (limiting Defendants to a single pre-answer motion). Finally, the Motion was untimely, in view of their stipulation (Dkt. 68) and this Court’s Order (Dkt. 69). A timeline of events relating to this Motion is set forth in Appendix A. I. Legal Standards “A pleading that states a claim for relief must contain: . . . a short and plain statement of the claim showing that the pleader is entitled to relief[.]” Fed. R. Civ. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 6 of 30 Page ID #:2713 -3- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 P. 8(a)(2). “Specific facts are not necessary; the statement need only ‘give the defendant fair notice of what the . . . claim is and the ground upon which it rests.’ ” Erickson v. Pardus, 551 U.S. 89, 93 (2007) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)). “To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’ ” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “The plausibility standard ‘does not impose a probability requirement at the pleading stage; it simply calls for enough facts to raise a reasonable expectation that discovery will reveal evidence’ to support the plaintiff's allegations.” Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018). “When deciding a Rule 12(b)(6) motion, the court must accept the facts pleaded in the complaint as true, and construe them in the light most favorable to the plaintiff.” Faulkner v. ADT Sec. Servs., Inc., 706 F.3d 1017, 1019 (9th Cir. 2013). A complaint does not require specific factual allegations as to each element of a claim. Recently, the Federal Circuit has held that “[T]he Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.” Nalco, 883 F.3d at 1350. Decisions before Nalco still recognize that one does not have to address every claim or every instance of infringement. See, e.g., e.Digital Corp. v. iBaby Labs, Inc., 2016 WL 4427209 (N.D. Cal. Aug. 22, 2016) (“each of the limitations found in at least one asserted claim”); TeleSign Corp., 2016 WL 4703873 at *3 (“each element of at least one claim”); DRG-Int’l, Inc., v. Bachem Americas, Inc., 2016 WL 3460791 at *6 (C.D. Cal. Jan. 5, 2016) (“But the requirement that a patentee disclose a mapping to the asserted claims . . . would, in effect, incorporate the need for patentees to disclose their infringement contentions at the pleading stage.”). II. The TAC Properly Pleads Direct Infringement Contrary to Defendants’ implied pleading standard, the proper inquiry is the sufficiency of the allegations—not the sufficiency of the evidence. See Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 7 of 30 Page ID #:2714 -4- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Twombly, 550 U.S. at 556; Iqbal, 556 U.S. at 696. On numerous occasions, the Motion complains about an alleged lack of evidence, but this is irrelevant for purposes of a motion to dismiss. (E.g., Mot. at 10 (“has not alleged with evidence”), 11 (“does not state with any evidence”), 14 (“But, there is no evidence “)). However, despite not being required to do so, the TAC does in fact include actual specific factual evidence demonstrating—not simply alleging— how Defendants are liable for infringement of each of the Patents-in-Suit. The TAC contains screenshots and explanations mapping every limitation of at least one claim of each Patent-in-Suit. Thus, the central theme of Defendants’ Motion—lack of specific evidence for each limitation—is not only false but completely irrelevant. Defendants argue that the direct infringement counts are deficient as to most Accused Websites because the TAC does not provide a separate claim chart for each one. (Mot. at 8). Defendants cite no authority for the alleged requirement of separate claim charts with detailed specific facts for each website, nor can they. Indeed, one does not have to set forth claim charts at all in a complaint. DRG- Int’l, 2016 WL 3460791 at *6 (rejecting the “need for patentees to disclose their infringement contentions at the pleading stage.”); N. Star Innovations, Inc. v. Micron Techs., Inc., 2017 WL 5501489 at *3 (D. Del. Nov. 16, 2017) (holding that pleadings do not need to include detailed infringement charts). Here, Plaintiff has set forth claim charts, specific evidence, and factual allegations as to each element of at least one claim of every Patent-in-Suit for the software used by the Accused Websites. The TAC distinguishes “Accused Systems” from “Accused Websites.” The Accused Systems are defined as: “Defendants’ software and hardware supporting various Internet websites for streaming video, and related home and mobile device specific applications (the “Accused Systems”). (TAC, ¶ 160). The “Accused Systems” support the “Accused Websites” which Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 8 of 30 Page ID #:2715 -5- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 are specific websites owned by MindGeek. Id. These websites appear to: (1) use the same software base; and (2) contain the same features accused of infringement. Because they are owned by the same business operation (“MindGeek”), it is reasonable to infer that the Accused websites infringe in the same manner. Pages 2-45 of the TAC plead extensive facts and set forth evidence that each Defendant jointly owns, manages, operates and controls each of the Accused Websites. (See also TAC, ¶¶ 216-304 (containing detailed claim charts citing evidence and explanations of infringing features of the Accused Systems)). The factual allegations in the TAC are not limited to pornhub.com and on their face allege that “The descriptions are only meant as exemplary evidence to assist Defendant’s in identifying Accused Software and to show how Defendants' Websites plausibly infringe one claim[.]” (TAC, pp. 122, 126, 141, 145, 151, 165, 180, 186, 190, 193) The claim charts provide specific factual allegations for each limitation addressed to the software of the Accused Websites (not just pornhub.com) and merely provide screenshots from pornhub.com “by way of example” to explain the operation of the software used by the Accused Websites. Id. Examples include: “Defendants’ software relating to the Accused Websites are stored and operated on computer systems having computer readable media” (TAC, p. 118), and “Defendants’ Accused Websites catalogue multimedia data by associating portions of multimedia data with a plurality of keywords” (TAC, p. 124). Defendants have failed to explain why it is necessary to separately allege infringement with a claim chart for each Accused Website given their apparent similarities. A Court addressing this issue held that factual allegations can extend to other products in a well-pled complaint. Cywee Group Ltd. v. Huawei Device Co, Ltd., 2018 WL 3819392 at *5 (E.D. Tex. Aug. 10, 2018) (“[Defendant] does not cite any case that supports its proposition that a plaintiff must plead specific acts of induced infringement on a product-by-product basis, nor is the court aware Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 9 of 30 Page ID #:2716 -6- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 of any case law that supports such a proposition.”) The Court must draw all reasonable inferences in favor of Cywee. Here, . . . the allegations permit the Court to reasonably infer that, if any of the seven accused devices infringe, then all of them infringe in the same manner. . . . Huawei’s arguments to the contrary would require CyWee “to prove all aspects of its claims” in its complaint, which is not required at the pleading stage. Id. (internal citations omitted). Recent Federal Circuit authority makes it clear that Patentees do not even have to plead facts establishing “each element” or provide “evidentiary support” at all in a complaint, further demonstrating that separate charts are not required: [Plaintiff’s] pleading clearly exceeds the minimum requirements under Rule 12(b)(6), especially as “the Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.” Nalco, 883 F.3d at 1350 (citation omitted). In one case, the allegation was merely “that the accused products meet ‘each and every element of at least one claim of the [Patents-in-Suit], either literally or equivalently.’ ” Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018). The supporting factual allegations consisted of identifying the accused products “by name and by attaching photos of the product packing as exhibits.” Id. Nevertheless, the Federal Circuit held that “These disclosures and allegations are enough to provide VGH Solutions fair notice of infringement of the asserted patents.” Id. Even if one ignores the fact that a complaint requires “factual allegations”—not “specific evidence”, Plaintiff’s pleadings are still sufficient. Here, the specific evidence cited from pornhub.com and other sources establishes infringement of at least one claim by Defendants (who jointly operate pornhub.com). Since the TAC has set forth a plausible case of infringement of at Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 10 of 30 Page ID #:2717 -7- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 least one claim of each patent, it meets the pleading requirements, and the Motion should be denied. Furthermore, the Patents-in-suit are largely directed to the source code of computerized back end systems. So, even if pleadings were required to contain infringement contentions, the specificity demanded by Defendants implicates its source code, which is not publicly available. K-Tech Telecomm., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1286 (Fed. Cir. 2013) (holding that a defendant cannot prevent a patent infringement suit by operating in secrecy). The higher standard applicable to infringement contentions still takes into account the limits of available information. See Creagri, Inc., v. Pinnaclifie Inc., 2012 WL 5389775 at *3 (N.D. Cal. Nov. 2, 2012). Here, Defendants cannot demand that Plaintiff provide source code details while withholding that source code. III. The Doctrine of Equivalents Does Not Require Separate Allegations Defendants argue that Plaintiff’s complaint is defective because it does not set forth factual allegations under the doctrine of equivalents. (Mot. at 17). Defendants’ argument fails because there are no separate pleading requirements for the doctrine of equivalents. Gracenote, Inc. v. Sorenson Media, Inc., 2017 WL 2116173 at *4 (D. Utah May 15, 2017) (“The Federal Circuit has not required explicit pleading of the doctrine of equivalents in a complaint; instead, ‘a claim under the doctrine of equivalents can be brought through an allegation of direct infringement.’ ”); Auburn Univ. v. IBM, 864 F. Supp. 2d 1222, 1225 (M.D. Ala. 2012). The cases cited by Defendants are inapposite because they generally do not address pleading requirements. Only in the Macronix case was there any mention at all of pleading the doctrine of equivalents, but in that case there was a Court order specifically directed to pleading requirements that had been violated. Macronix Int’l. Co., Ltd. v. Spansion Inc., 4 F. Supp. 3d 797, 804 (E.D. Va. Mar. 10, 2014). Moreover, the complaint at issue failed to plead literal infringement making any alleged deficiency under the doctrine of equivalents moot. In any Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 11 of 30 Page ID #:2718 -8- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 case, requiring granular factual details of the source code necessary for an equivalents analysis when such information is not available and the claims are not construed does not make sense. IV. The TAC Properly Pleads Indirect Infringement “[I]nducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305-06 (Fed. Cir. 2006). The TAC clearly demonstrates that Defendants met both of these requirements. The TAC describes the ways in which Preservation notified Defendants of the Patents-in- Suit and of Plaintiff’s allegations that the use of the Accused Websites infringes these patents. (TAC, ¶¶ 208-212). Furthermore, the TAC alleges and Defendants cannot dispute that Defendants continued to encourage their customers to use the software of the Accused Websites. Defendants’ knowledge that use of the Accused Systems constitutes infringement and their continued encouragement of their use is sufficient for the Court to infer that Defendants had specific intent to induce infringement of the Patents-in-Suit. See Crypto Research, LLC v. Assa Abloy, Inc., 236 F. Supp. 3d 671, 687 (E.D.N.Y. 2017). Any suggestion that Defendants operated the Accused Websites without intending that they be used by customers and third-parties is facially absurd. Defendants argue that Plaintiff’s induced and contributory infringement claims should be dismissed because they do not give particularized examples of any acts that induce infringement and are “bereft of details” to support indirect infringement. (Mot. at 17-20). In support of this argument, Defendants improperly narrow Plaintiff’s indirect infringement allegations to a narrow set of paragraphs. Id. at 18 . This improper selection ignores the vast bulk of the nearly 50 paragraphs of allegations describing Plaintiff’s indirect infringement claims and giving specific details and examples. Indeed, the section titled “Induced and Contributory Infringement” includes additional paragraphs 208-214 and Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 12 of 30 Page ID #:2719 -9- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 incorporates by reference paragraphs 163-181. Notably, these paragraphs allege that Defendants’ acts of induced and contributory infringement include making software available through the Accused Websites and issuing computerized instructions controlling the timing and manner of infringement that cause their users and third parties to directly infringe by operating or using this software. (TAC, ¶¶ 198, 200, 202). It cannot be seriously contested that plaintiff has not provided particularized facts, details and examples concerning the providing of infringing software to its customers who used its websites. Plaintiff has identified the accused websites and paragraphs 215-304 further describe in detail in the form of claim charts illustrating how the Accused Systems infringe—thus, this provided software induces infringement by its users. This detail includes computerized instructions issued to a customer’s player (TAC, pp. 130-35, 138-41, 153-160, 169-173, 176-179) and third party CDNs (e.g., TAC, pp. 125, 135, 135) when the Accused Websites are used by customers and third parties. Thus, the TAC gives particularized examples and evidence of induced and contributory infringement by the Defendants. The TAC provides a detailed explanation of why and how Defendants are liable for contributory infringement of the Patents-in-suit. (TAC ¶¶ 165, 178, 198-220(. The TAC specifically alleges that MindGeek’s systems made available at the Accused Websites include components that have no substantial noninfringing use and when combined with a CDN or a customer’s player results in infringement of the claims. (TAC, ¶¶ 206, 207). The TAC also alleges that the MindGeek Organization, which includes each of the Defendants here, were given specific notice of infringement in two sets of letters, in-person meeting with the same counsel as here, and in a complaint filed in 2014 listing the patents and websites—thereby establishing knowledge of the Patents by Defendants prior to the filing of this suit. (TAC, ¶¶ 208-212). Plaintiff’s notice letters were sent to the United States offices of Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 13 of 30 Page ID #:2720 -10- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 “MindGeek” at MindGeek S.a.r.l and MindGeek USA offices—entities that are alleged to own, manage, operate and control the Accused Websites. (E.g., TAC ¶¶ 22, 31, 33). These offices are also alleged to be offices for all of MindGeek as indicated on the MindGeek website. (TAC ¶¶ 22, 33) (describing www.mindgeek.com). Plaintiff also met with Defendants’ counsel, the same counsel here, and provided actual notice of its infringement claims. (TAC ¶ 212). Defendants continued to provide their infringing software to customers and third parties despite knowledge that this would result in infringement. Plaintiff’s allegations are sufficient to show specific intent to induce infringement by the Defendants. Versata Software, Inc. v. Calidus Software Inc., 944 F. Supp. 2d 357, 363 (D. Del. 2013) (holding that allegation that Defendant licensed and sold accused products was sufficient to plead induced infringement). Together these allegations concerning the provision of infringing software that induced customers to infringe with knowledge of the patents alone are sufficient to state a claim of indirect infringement. Since Plaintiff has shown a plausible case of indirect infringement for at least one claim, it has met its pleading burden and does not need to detail every act of indirect infringement in the TAC. On this basis alone Defendants’ motion should be denied. Furthermore, in anticipation of the Defendants attempting to play the corporate shell game with the 100+ MindGeek entities, Plaintiff also lists other types of inducement claims directed at one MindGeek entity inducing another MindGeek entity to infringe. These activities are described in the MindGeek S.à.r.l.’s 2016 Financial Report (“MG Financial Report”) (Ex. B to TAC) (Dkt. 88-1)1; see also id. at 68 and include MindGeek S.à.r.l and USA inducing other MG entities to infringe by exercising “corporate instruction”, “direction” and “control” through “stock ownership” and “shareholders’ agreement[s]” directing 1 The 2016 Financial Report describes MindGeek S.à.r.l. as the ultimate parent of a “Group” consisting of “MindGeek and its subsidiaries.” Id. at 14. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 14 of 30 Page ID #:2721 -11- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 the infringing sites to operate and thus infringe (Id. at 14, 692), and providing technical knowhow or expertise, content (id. at 21), domain names (id. at 14), trademarks (id. at 14), advertising, legal defense (id. at 8, 61), capital (id. at 66), software (id. at 61), employees and advertising sales (id. at 26) that facilitate the other Defendants infringing operation of the Accused Websites. (TAC ¶¶ 184, 185); see also MG Financial Report at 68 (“The shareholders' agreement provides MindGeek with certain rights and conditions that effectively allow MindGeek to control all of its subsidiaries”)). These activities of the corporate parent MindGeek S.à.r.l. and MindGeek USA are alleged to have induced other MindGeek entities (as well as customers and third parties) to engage in infringing conduct by operating the web sites. (TAC ¶ 185). See Applera Corp. v. MJ Research Inc., 389 F. Supp .2d 344, 354 (D. Conn. 2005) (accepting jury verdict that corporate officers were liable for inducing infringement). In short, the TAC pleads particular facts to demonstrate that Defendants have engaged in at least one act of indirect infringement and therefore Defendants’ motion should be denied. V. The TAC Properly Pleads Willful Infringement The factual allegations concerning knowledge of the patents, Plaintiff’s infringement allegations, and acting with specific intent to infringe also support a claim of willful infringement. See Gracenote, 2017 WL 2116173 at *3 (rejecting Defendants’ argument that Plaintiff should reorganize its allegations). Defendants falsely assert that Preservation failed to allege that Defendants had knowledge of the asserted patents prior to filing the 2014 lawsuit. (Mot. at 21). However, the TAC clearly describes how Defendants received notice of infringement prior to that suit. (TAC, ¶ 208) (describing notice letters sent to MindGeek prior to the 2014 lawsuit). Defendants’ Motion also refers to “concerns of equitable estoppel.” (Mot 2 Citations are to the ECF page numbers and not the page numbers in the exhibit. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 15 of 30 Page ID #:2722 -12- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 at 20). However, MindGeek does not appear to dispute the sufficiency of these allegations. MindGeek’s assertion that “PT cannot prove willfulness” confirms its understanding of the allegation. VI. Defendants’ Limitation by Limitation Arguments Lack Merit and Demonstrate that the Complaint Adequately Pleads Infringement. Defendants challenge specific limitations of every patent concerning the sufficiency of the evidence cited in the TAC. As explained above, arguments concerning a lack of evidence are facially irrelevant because a complaint need only make “factual allegations” not put forth “evidence” to prove its case. Nalco, 883 F.3d at 1350 (“[Plaintiff] was not required to provide evidentiary support for its claims at this stage of the proceedings[.]”); see also Sections I-II, supra. Rather, the Complaint must merely place the “potential infringer ... on notice of what activity ... is being accused of infringement.” Id. Indeed, recent and controlling Federal Circuit case law makes clear that the “Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.” Id. Nevertheless, as set forth below in detail, the TAC not only makes factual allegations addressing each of the recited limitations, it cites evidence and provides explanation specially addressed to each and every alleged defect described in the Motion. Repeatedly, Defendants frivolously claim that there are no factual allegations or evidence as to an issue despite the fact that the factual allegations and evidence are clearly in the TAC. Indeed, extensive explicit factual allegations and evidence as to the operation of CDNs, joint infringement, the catalogue, third parties, and the claimed relationships are readily identifiable and Defendants repeated claim that they are missing raises the specter that Defendants did not attempt to read the Complaint. Finally, Plaintiff notes that this section challenging the sufficiency of “evidence” in view of a particular claim construction is in effect an improper Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 16 of 30 Page ID #:2723 -13- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 motion for summary judgment couched as a motion to dismiss. At the January 7, 2019 Scheduling Conference, Defendants specifically represented to the Court that the Motion did not involve claim construction issues, yet repeatedly Defendants challenge the allegations of the TAC because they assert a claim construction that requires “user action” or “specification” or joint infringement— when no such requirement is in the claim—and then contend that Plaintiff’s evidence is insufficient. The Scheduling Order (Dkt. 114) provides for a single summary judgment motion to be filed in June 2021 and this attempt at filing an early summary judgment should count as their one motion limit. The alleged limitation-by-limitation defects are addressed as follows: A. ’014 Patent Defendants allege that Plaintiff “makes no factual assertions about ‘third party Accused Systems.’ ” (Mot. at 9). This is untrue. Defendants repeat this allegation virtually verbatim with respect to every Patent-in-Suit, so this discussion equally applies to those claims. (See Mot. at 9, 11-16). In fact, the TAC is replete with factual assertions about third-party Accused Systems describing in specific detail how Defendants induce infringement by third party CDN systems including third-party servers, networks, and caches and alleges existence of agreements that provide agency for joint infringement: 178. … Defendants control and put into use the interactions between customer and third-party devices (including CDNs) and Defendant systems in an infringing manner in this jurisdiction and elsewhere. Defendants have agreements with third party CDNs for use of the CDNs in combination with Defendants software in an infringing manner. These agreements allow for use, control an effective agency in conducting infringing activity. 200. … For example, Defendants provide software instructions sent to third-parties that put into use the third-parties’ players, CDNs Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 17 of 30 Page ID #:2724 -14- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 and other systems. . . . Further, Defendants’ software establishes the manner and/or timing of the performance of steps …Defendants upload or place the content served by the infringing systems into third party CDNs for the purpose of performing infringing acts. (TAC, ¶¶ 178, 200; p. 126, ll. 3-7). Furthermore, the TAC specifically describes how third party systems participate in the infringement, for example, as access systems, distribution systems, archive servers, and other infringing systems: Defendant provides software specifically designed to control, put into use, instruct and/or use system components of content delivery networks ("CDNs") (such as those provided by Akamai, Level 3, and Limelight) and other third parties to locate and deliver content. . . . The Accused System and Method uses one or more archive servers, at Defendant and at CDNs that use an ID to retrieve the multimedia data to be transmitted. . . . For example, on at least one occasion, video was served from a server located at 93.184.215.132. This address is assigned to EdgeCast Networks. TAC, p. 136. The TAC specifically identifies one such CDN “EdgeCast” that distributes Defendants’ content to users: Id. at 137. The TAC at p. 125 and 135 further alleges and depicts computerized instructions from Defendants’ severs are used to access a cache in a CDN: Defendants’ Accused Websites uses protocols that retrieves multimedia data from caches provided by Defendants’ CDNs: Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 18 of 30 Page ID #:2725 -15- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants also argue “there is no evidence [in the TAC] that Defendants themselves via a computer ‘specify a search request,’ as opposed to a user who is a separate entity. Mot. at 9. However, Plaintiff alleges that the software of the Accused websites allow for the specification of a search request. TAC, p. 119 (“Defendants’ Accused Websites [(i.e., the code for those websites)] allow its users to specify search requests, as depicted.”) The referenced depiction is reproduced below with added annotations. (TAC, p. 120, ll. 1-7) (illustrating query for “jenna jameson”). This screenshot shows the Defendants’ system formulating a URL query to the index server (“www.pornhub.com/video/search?search=jenna+jameson”) (indicated by a red box) for which the index server provides search results to the browser. This URL query was not input by the user, rather its form and content is specified by the code of Defendants’ server using the user’s inputs (indicated by a green box). Furthermore, the TAC pleads joint infringement. (TAC, p. 107-08, ¶ 178). The TAC alleges that Defendants’ employees use Defendants’ infringing systems in the same manner as Defendants’ users, thus the Defendants are liable: “Upon information and belief, Defendants’ employees, in this Judicial District and elsewhere, operate the Accused Systems in an infringing manner.” Id. ¶ 179 Defendants further argue the “TAC is further lacking because it does not plead sufficient evidence regarding the claim limitation ‘said plurality of catalogue elements associated with a plurality of keywords of said catalogue, said Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 19 of 30 Page ID #:2726 -16- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 plurality of keywords identifying said multimedia data, said plurality of keywords being interrelated by one or more of associative, whole-part and inheritance relationships.” (Mot. at 10.) This same argument is repeated on pages 11 and 13 of the Motion. However, the TAC does in fact allege that this limitation is present: “at least one of the data structures containing the title, id, and other descriptive information (some of which is displayed with the link to the video as depicted below) and tags associated with the multimedia portion meet this catalogue limitation. This data structure has multiple elements housing attributes and different types of data. There are also child-parent, whole-part, and associative relationships between the catalogue elements and between keywords described above.” (TAC, pp. 118-19.): (TAC, p. 119, ll. 6-12) (showing a screenshot of the record displayed from this data structure). As can be seen from the record above, the accused catalogue data structure has multiple catalogue elements associated with keywords (depicted in orange) (e.g., Categories, Tags, Pornstars, etc.). These keywords are alleged to have child-parent, whole-part and associative relationships. (TAC, p. 119). These relationships are further explained and depicted in screenshots on page 184 of the TAC: Catalogue elements also include alternative definitions of other catalogue elements. … the keyword 'anal' is an alternative for the keyword 'ass'. Search results included for the query 'ass' are also Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 20 of 30 Page ID #:2727 -17- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 returned for the query 'anal'. Also parent child relationships and associative relationships return alternate expressions of categories and other terms arranged in a hierarchal manner. For example, “Big Ass” is a species of “Ass.” B. ’499 Patent Defendants’ “third party Accused Systems” allegation (Mot. at 11) is addressed above on page 13. Defendants also repeat their argument regarding “catalogue elements” (Mot. at 11), which is without merit, as discussed above on page 17. (see also TAC, pp. 124-125 (associated factual allegations)). Defendants further allege that the TAC “fails to allege the archive server functionality as to Defendants.” (Mot. at 11). This assertion is severely undercut by the fact that claim 16 of the ’499 Patent does not recite an “archive server”. In any case, this appears to be a claim construction argument, which tacitly concedes that the TAC provide fair notice of Plaintiff’s infringement allegations. However, with respect to claim 2 of the ’080 Patent, which does recite an archive server, the TAC clearly alleges archive server functionality as to Defendants: Defendants’ websites provide an archive server interfaced with the browser for providing storage location information that retrieves multimedia data including identification of the storage of a video. This location is sent to the Browser over a software interface. (TAC, p. 135). Indeed, the TAC discuses operation of the archive server and specifically identifies one such archive server instructions identifying the storage location of a video in a cache: As depicted above and below, the URL and scripts sent to the player and browser identifies storage location of the video within Pornhub’s CDN: Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 21 of 30 Page ID #:2728 -18- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 C. ’080 Patent Defendants’ “third party Accused Systems” allegation (Mot. at 12) is addressed above on page 13. Defendants also argue that the TAC “glosses over the “access management system’ limitation, which “is coupled to said cataloguing system.” (Mot. at 12). Defendants’ underlying premise appears to be that the ’080 Patent “repeatedly refers to ‘an asset management system’ that ‘includes search tools to query the catalogue to identify a set of catalogue elements having attributes that satisfy a search criteria.’ ” (Mot. at 12). This is an argument directed to the construction of “an asset management system”—not the sufficiency of the pleadings. Thus, contrary to Defendants’ representations to the Court, the Motion does involve claim construction issues. In any case, the TAC explicitly states that the functionality of the access management system is met by “ a variety of devices and browsers such as tablets and mobile devices such as iOS and Android powered devices” that access Defendants’ websites. (TAC, p. 128). The TAC clearly establishes an asset management system of those websites that includes search tools to query the catalogue elements. Id. at 129. The evidence for the claimed “catalogue” of the indexing server that is queried by the browser has been described above on page 17. (see also TAC, p. 128 (associated factual allegations)). D. ’831 Patent Defendants’ “third party Accused Systems” allegation (Mot. at 12) is addressed above on page 13. Defendants further argue that Plaintiff “fails to provide any factual information about the data structure,” which, as discussed above on page 17, is without merit. (see also TAC, pp. 142-43 (associated factual allegations)). E. ’495 Patent Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 22 of 30 Page ID #:2729 -19- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants’ “third party Accused Systems” allegation (Mot. at 13) is addressed above on page 13. Defendants further argue that Plaintiff “fails to provide any factual information about the data structure ” and “the TAC does not plead sufficient evidence regarding the claim limitation ‘catalogue comprising a plurality of elements and relationships between said plurality of elements…” Id. This is substantially the same argument addressed above on page 17 with respect to the ’014 Patent concerning “said plurality of catalogue elements associated with a plurality of keywords”. (see also TAC, pp. 147-50 (factual allegations associated with this limitation)). The TAC clearly provides evidence that Defendants’ data structures contain descriptive information and tags associated with a video (see text): (TAC, p. 150). The TAC also states that the catalogue elements contain portions (clips or even gifs): Defendants’ Accused Websites include pointers to portions of multimedia data associated with a catalogue element. For example, Defendants’ Websites provide links associated with specific keywords that identify the portions of a related video including the website’s gif feature among other things. The link directs end users to the specific time within the video of the keyword. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 23 of 30 Page ID #:2730 -20- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (TAC, pp. 149-50). From Plaintiff’s provided screenshots of the operation of Defendants’ websites showing a description of the gif including categories, tags, date added, and time featured. It is clear that Defendants’ systems associate specific keywords with gifs which are a portion of the complete video. F. ’537 Patent Defendants’ “third party Accused Systems” allegation (Mot. at 13) is addressed above on page 13. Defendants also argue “PT states ‘Defendants’ system that are being interfaced . . . are a browser and an indexing server.’ ” (Mot. at 14). The TAC provides extensive description including screenshots identifying the functionality at the website and the computerized scripts processing a video for “Jenna Jameson” issued from the browser to the index server that reveal the API protocol means that is claimed. Id. Defendants further argue “PT states that the limitation ‘testimonies’ is met by ‘videos’ of a person keyword using the catalogue, but provides no support for this conclusion.” (Mot. at 14). Defendants do not allege the TAC fails to plead any aspect of this limitation. Rather, this is dispute over the construction of the claim term “testimonies.” However, the Court made it clear that it will not entertain claim construction disputes in the Motion, consequently, Plaintiff will not argue the constructions here. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 24 of 30 Page ID #:2731 -21- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 G. ’060 Patent Defendants’ repeated “third party Accused Systems” allegation (Mot. at 14) is addressed above with respect to the ’014 Patent on page 13. Defendants further argue “there is no evidence that Defendants themselves via a computer ‘initiates a routine,’ as opposed to a user who is a separate entity.” (Mot. at 14). This argument is based on a misreading of the claim language. First, nothing in the claim language specifies who has to “initiate the routine,” so the argument fails for the start. The user initiating a routine provided by the code of the Accused System is evidence that the Accused System invokes a search request using a generalized protocol. Nowhere does the claim separately require Defendants to initiate a routine. Nevertheless, the TAC clearly shows that the software of the Accused Websites (i.e., defendants’ software) includes routines/protocols for querying the index server, retrieving and displaying multimedia data and thus there is “computer readable code of the Defendant to cause a computer [defendant’s server] to invoke a search request” using the routines/protocols of Defendant’s software. (See TAC, pp. 167-174). Defendants argue: “to the extent PT argues there is joint infringement between Defendants and its users, PT has not plead such joint infringement allegations under the requisite legal standard.” The TAC is replete with allegations of how Defendants and its users jointly infringe the Asserted Patents, including in sections titled “Direct and Joint Infringement” and “Induced and Contributory Infringement.” Specifically, the TAC articulates facts concerning acts of control, agency, instruction, agreements with other MindGeek entities, customers and CDNs, and inducement sufficient to establish a plausible case of direct, joint, and indirect infringement. (TAC, ¶¶ 165, 178, 198-205); see also Intellectual Ventures I LLC v. Toshiba Corp., 66 F. Supp. 3d 495 (D. Del. 2014) (holding that a parent can liable for infringement by a subsidiary); see also Nalco, 883 F.3d at 1351-53 (reinstating joint infringement claims). Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 25 of 30 Page ID #:2732 -22- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 H. ’527 Patent Defendants’ “third party Accused Systems” allegation (Mot. at 14) is addressed above on page 13. Defendants allege the TAC “makes the conclusory assertion that ‘Defendants’ websites associate multimedia data using thesaural keyword associations.’ ” (Mot. at 15). The TAC includes numerous examples of how Defendants’ websites associate multimedia data using thesaural keyword associations, giving screenshots from the website in conjunction with the following text: For example, different keywords referring to the same subject may produce related results. Searching one keyword may return results containing a related thesauri term. Searching ‘Boobs’ may return results containing ‘tits’. (TAC, p. 185). “For example, the keyword 'anal' is an alternative for the keyword 'ass'. Search results included for the query 'ass' are also returned for the query ‘anal’.” Id. at 184. I. ’911 Patent D Defendants’ “third party Accused Systems” allegation (Mot. at 11) is addressed above on page 13. Defendants further argue “there is no evidence that Defendants themselves via a computer ‘assign tags to portions of multimedia.’ as opposed to a user who is a separate entity.” (Mot. at 15). First, the TAC clearly states that Defendants’ computers assign tags to multimedia data: Defendants’ Accused Websites .., cause the computer to specify a description for a portion of the multimedia data. For example, Defendants’ Websites prompt its end users to provide tags for clips of multimedia. Defendants’ Websites may also assign tags to portions of multimedia. See above for description of catalogue elements. (TAC, p. 188). In addition, the claim does not specifically require “users” to assign tags to the data but rather the code must specify a description. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 26 of 30 Page ID #:2733 -23- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants argue “if a user is assigning the tag, it is not clear how there can be ‘computer readable program code’ to do so.” (Mot. at 15). The TAC clearly describes the computer readable program code that enables the system to catalogue multimedia through user assigned tags: At least one of the data structures containing descriptive information and tags associated with the multimedia portion, among other things, may meet this limitation. Defendants’ Websites employ code to create catalogue elements for portions of multimedia data, such as tags provided by its end users or assigned by its systems….It is further used to populate the attributes of an element and create relationships between elements for search. (TAC, p. 189). Furthermore, Defendants’ employees use Defendants’ infringing systems in the same manner as Defendants’ users, including using the Accused Systems to catalogue multimedia. (TAC, ¶ 179). When Defendants’ employees catalogue multimedia by assigning tags to portions of multimedia data, clearly it is Defendants themselves who are directly infringing the Asserted Patents, even if one accepted Defendants’ flawed construction. J. ’071 Patent Defendants’ “third party Accused Systems” allegation (Mot. at 15-16) is addressed above on page 13. Defendants further argue that Plaintiff provides no support for equating “the ‘comment section’ of the PornHub webpage to a survey.” (Mot. at 16). This is a dispute over the construction of the claim term “survey”—not the sufficiency of the allegation. Id. (referring to “this lexicographic stretch”). However, solicitations for comments are a form of survey. As set forth in the TAC and depicted below, the comments section has thumbs up and down icons for “likes” and “dislikes” which are tallied for form a rating. (TAC, p. 192). This constitutes typical survey evidence. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 27 of 30 Page ID #:2734 -24- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 K. ’638 Patent Defendants’ “third party Accused Systems” allegation (Mot. at 11) is addressed above on page 13. Defendants further argue the TAC “alleges without evidence that PornHub ‘associate[s] multimedia data with survey data[.]’ ” (Mot. at 16). This is dispute over the construction of the claim term “survey data”—not the sufficiency of the allegation. The TAC clearly pleads that Defendants’ systems associate this user data with multimedia and provides screenshot evidence: Defendants’ Accused Websites obtains survey data from end users such as video comments, title, categories, production, tags, date added, and date featured for a specific multimedia clip. This data is associated with the multimedia clip. The above information is stored as an element in a catalogue as described above. (TAC, p. 195) The user data is associated with clips of the multimedia data. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 28 of 30 Page ID #:2735 -25- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (TAC, p. 198). By associating user submitted data (survey data) with multimedia clips, Defendants’ systems are clearly associating multimedia data and survey data. (See also TAC, p. 197 (“ Comments, tags, production, categories, data added, and other associated user data are searched, located, and displayed alongside the clips, and other media hosted by Defendants’ Accused Websites.”) Defendants further argue that Plaintiff alleges without support that“ ‘survey data’ equates to ‘video comments, title, categories, production, tags, date added, and date featured for a specific multimedia clip’ done by end users.” However, Defendants do not allege the TAC fails to plead any aspect of this limitation. (Mot. at 16). This is a dispute over the construction of the claim term “survey data.” As set forth in the TAC at 192 and depicted above, the comments section has thumbs up/down icons for “likes”/“dislikes,” which are tallied for a rating, which is typical for a survey. Defendants also argue that the TAC “implicates an end user, without alleging joint infringement.” The allegations concerning user action, joint infringement, and use by MindGeek’s employees to use the system in an infringing manner are discussed above on page 22. VII. Any Dismissal Should be without Prejudice If dismissal is granted, it should be without prejudice. E.g., N. Star, 2018 WL 315528 at *5. Defendants only raised these concerns after the SAC was filed. We asked to meet and confer before filing the TAC to determine if the alleged defects had been resolved, but Defendants refused. Furthermore, if amendment is necessary, the Court should set the date for filing the amended complaint to be the same day as infringement contentions are due. At that time, Plaintiff will have conducted a source code review and will be in position to address the Defendants’ concerns and/or narrow the case, if appropriate. Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 29 of 30 Page ID #:2736 -1- PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DATE: January 21, 2019 HARDY PARRISH YANG LLP By: /s/ R. Floyd Walker Victor G. Hardy (admitted pro hac vice) William M. Parrish (admitted pro hac vice) R. Floyd Walker (admitted pro hac vice) STRADLING YOCCA CARLSON & RAUGHT, P.C. Douglas Q. Hahn Salil Bali Attorneys for Plaintiff Preservation Technologies, LLC Case 2:17-cv-08906-DOC-JPR Document 118 Filed 01/21/19 Page 30 of 30 Page ID #:2737