Blackbird Tech Llc v. Tomtom, Inc.

REPLY BRIEF re MOTION to Dismiss for Failure to State a Claim

D. Del.January 27, 2017

200659.00004/104950257v.1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES, Plaintiff, v. TOMTOM, INC., Defendant. Case No. 1:16-cv-00687-GMS DEFENDANT TOMTOM INC.’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT BLANK ROME LLP Larry R. Wood, Jr. (DE #3262) LWood@BlankRome.com Adam V. Orlacchio (DE #5520) Orlacchio@BlankRome.com 1201 N. Market Street, Suite 800 Wilmington, Delaware 19801 Tel: (302) 425-6400 Dated: January 27, 2017 Attorneys for Defendant, TomTom, Inc. Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 1 of 15 PageID #: 465 -i- 200659.00004/104950257v.1 TABLE OF CONTENTS Page I. INTRODUCTION ...............................................................................................................1 II. ARGUMENT .......................................................................................................................1 A. The Court Should Deny Blackbird’s Motion to Strike ............................................1 B. The Asserted Claims Are Invalid Under 35 U.S.C. § 101 as Being Directed to Patent-Ineligible Subject Matter ..........................................................................5 1. Blackbird Failed to Substantively Respond to TomTom’s Section 101 Arguments .............................................................................................5 2. Alice Step One: the Asserted Claims are Directed to the Abstract Idea of Using an Algorithm to Calculate Distance Traveled .......................6 3. Alice Step Two: the Remaining Elements Fail to Transform the Abstract Idea Into a Patent-Eligible Application of the Abstract Idea ......................................................................................................................7 C. Blackbird Fails to Plead Facts Sufficient to Support Direct, Induced, and Willful Infringement ................................................................................................8 III. CONCLUSION ..................................................................................................................10 Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 2 of 15 PageID #: 466 -ii- 200659.00004/104950257v.1 TABLE OF AUTHORITIES Page(s) Cases Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016)..............................................................................................7, 8 Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014) ...............................................................................................................8 ART+COM Innovationpool GmbH v. Google Inc., No. CV 14-217, 2016 WL 1718221 (D. Del. Apr. 28, 2016) ....................................................6 Ass’n of Irritated Residents v. C&R Vanderham Dairy, 2006 WL 2644896 (E.D. Cal. Sept. 14, 2006) ...........................................................................4 Baraka v. McGreevey, 481 F.3d 187 (3d Cir. 2007).................................................................................................9, 10 Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) .................................................................................................................10 Coleman v. Pension Benefit Guar. Corp., 196 F.R.D. 193 (D. D.C. Aug. 10, 2000) ...................................................................................3 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)..................................................................................................6 Fischbach v. City of Toledo, 2009 WL 2999166 (N.D. Ohio Sept. 15, 2009) .........................................................................4 Flintkote Co. v. Aviva P.L.C., No. CV 13-103, 2015 WL 1405922 (D. Del. Mar. 25, 2015)....................................................5 Fowler v. UPMC Shadyside, 578 F.3d 203 (3d Cir. 2009).......................................................................................................8 In re Westinghouse Securities Litigation, 1998 WL 119554 (W.D. Pa. Mar. 12, 1998) .............................................................................3 Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937 (2009) ........................................................................................9 Leyse v. Bank of America Nat. Ass’n, 804 F.3d 316 (3d Cir. 2015).......................................................................................................4 Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 3 of 15 PageID #: 467 -iii- 200659.00004/104950257v.1 Masimo Corp. v. Philips Elec. N. Am. Corp., 62 F. Supp. 3d 368 (D. Del. Mar. 31, 2014) ..............................................................................5 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S. Ct. 1289 (2012)) ........................................................................................8 Parker v. Flook, 437 U.S. 584, 98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978) .............................................................6 Penn-Mont Benefit Serv., Inc. v. Crosswhite, 2003 WL 203570 (E.D. Pa. Jan. 29, 2003) ................................................................................4 Raindance Techs., Inc. v. 10x Genomics, Inc., No. CV 15-152, 2016 WL 927143 (D. Del. Mar. 4, 2016) ........................................................9 Shortridge v. Foundation Construction Payroll Service, LLC, 655 Fed. Appx. 848 (Fed. Cir. 2016) .........................................................................................8 Stoffels ex rel., SBC Concession Plan v. SBC Commc’ns, Inc., 430 F. Supp. 2d 642 (W.D. Tex. Feb. 3, 2006) ......................................................................3, 4 Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)....................................................................................................6 Walzer v. Muriel Siebert & Co., 447 Fed. Appx. 377 (3d Cir. 2011) ............................................................................................4 Statutes 35 U.S.C. § 101 ....................................................................................................................1, 2, 5, 6 Other Authorities Fed. R. Civ. P. 12(b)(6)..................................................................................................1, 4, 5, 8, 10 Fed. R. Civ. P. 12(c) ....................................................................................................................2, 4 Fed. R. Civ. P. 12(g) ........................................................................................................................4 Fed. R. Civ. P. 12(g)(2)....................................................................................................................3 Wright & Miller, 5B Fed. Prac. & Proc., 1342 (3d ed.) ..................................................................3 Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 4 of 15 PageID #: 468 I. INTRODUCTION Defendant TomTom, Inc. (“TomTom”) filed the pending Fed. R. Civ. P. 12(b)(6) motion to dismiss for failure to state a claim on December 8, 2016 (D.I. 19 and 20) because Plaintiff Blackbird Tech LLC d/b/a Blackbird Technologies’ (“Blackbird”) First Amended Complaint (“FAC”) failed to plead facts sufficient to support a claim of infringement, and the asserted claims of U.S. Patent No. 6,434,212 (“the ’212 patent”) are invalid under 35 U.S.C. § 101 (“Section 101”) as being directed to unpatentable subject matter. After the parties agreed to an extension of time, Blackbird filed its response on January 13, 2017. In its response, Blackbird moved to strike TomTom’s Section 101 argument as procedurally barred. Blackbird fails, however, to provide any basis for why the Court should not hear TomTom’s Section 101 arguments along with other motions raising Section 101 arguments on the same patent in co-pending cases. Resting on its motion to strike, Blackbird fails to substantively address TomTom’s Section 101 arguments except by impermissibly incorporating by reference its responses to the Section 101 arguments raised in the co-pending cases. Finally, in its response, Blackbird fails to identify facts plausibly supporting claims for direct, induced, and willful infringement. For these reasons, this Court should grant TomTom’s motion to dismiss in its entirety, and deny Blackbird’s motion to strike. II. ARGUMENT A. The Court Should Deny Blackbird’s Motion to Strike TomTom filed a first motion to dismiss on October 20, 2016 because Blackbird failed to articulate a plausible infringement theory in its original complaint. Rather than substantively Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 5 of 15 PageID #: 469 -2- 200659.00004/104950257v.1 respond, Blackbird filed its FAC and submitted a statement that the FAC purportedly mooted TomTom’s motion to dismiss in its entirety. D.I. 17. Blackbird’s FAC, however, failed to cure the deficiencies of its original complaint. No longer having a pending motion to dismiss, TomTom filed a second motion to dismiss on the same grounds as before (i.e., 12(b)(6)), but also added arguments that the asserted claims encompass patent-ineligible subject matter under Section 101. Since defendant Timex raised a Section 101 argument with respect to claim 6 of the ’212 patent in a motion to dismiss in a related action (Case 1:16-cv-00686, D.I. 26), TomTom raised its Section 101 arguments to include claims that were not asserted against Timex (claims 2 and 5).1 This way, the Court could consider the Section 101 arguments of all of the asserted claims of the ’212 patent in both cases rather than deciding Timex’s Section 101 motion and TomTom’s Section 101 motion (through a 12(c) motion) in successive, piecemeal fashion. Far from “piling on,” as Blackbird alleges, TomTom included its Section 101 arguments in an effort to conserve the resources of the Court and the parties. Blackbird in effect protests TomTom’s efforts to streamline this case.2 This Court is presently addressing multiple Section 101 motions to dismiss, from multiple defendants. Blackbird has already responded to most of these defendants. It is perplexing why Blackbird goes to such lengths to avoid addressing TomTom’s Section 101 arguments at the same time, and even more perplexing why it asks the Court to do the same. There is no practical reason to delay considering TomTom’s arguments until a later date, except to effectively deprive TomTom from contributing its arguments until after the Court has possibly decided the issue. 1 Unbeknownst to TomTom at the time of filing its motion to dismiss, another defendant also filed a motion to dismiss based on Section 101 on the same day. 2 Blackbird suggests that the Court could have heard all Section 101 arguments at the same time if TomTom replaced the pending motion to dismiss with an Answer and a 12(c) motion for judgment on the pleadings. Blackbird appears to be advocating for a process that would effectively force TomTom to voluntarily waive its 12(b)(6) Iqbal/Twombly arguments, answer the FAC that it finds lacking, and then subsequently file a Rule 12(c) motion having only its Section 101 arguments. Should this Court strike TomTom’s Section 101 arguments and otherwise deny TomTom’s motion, TomTom will file the Section 101 arguments in a Rule 12(c) motion after answering the FAC. Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 6 of 15 PageID #: 470 -3- 200659.00004/104950257v.1 Blackbird argues that striking TomTom’s motion serves the policy reason behind Rule 12(g)(2), which is “to expedite and simplify the pretrial phase of federal litigation while at the same time promoting the just disposition of civil cases.” Wright & Miller, 5B Fed. Prac. & Proc. Civ Section 1342 at 23 (3d ed.). In essence, Blackbird argues that splitting into two motions what TomTom did in one somehow simplifies the case. Yet, Blackbird’s position only serves to complicate matters by asking the Court to decide TomTom’s arguments at different times than the arguments raised in co-pending cases, despite the conservation of judicial resources that would result from the Court addressing the arguments at the same time. TomTom’s approach is much more efficient, and allows early resolution of a case-dispositive legal issue. Many courts facing a “successive” motion to dismiss following a mooted/unaddressed first motion to dismiss have exercised their discretion to consider the motion. See Stoffels ex rel., SBC Concession Plan v. SBC Commc'ns, Inc., 430 F. Supp. 2d 642, 648 (W.D. Tex. Feb. 3, 2006) (After plaintiff filed an response but before the court ruled on the merits of a motion to dismiss, plaintiff filed an Amended Complaint, thus purportedly mooting the motion to dismiss. “[T]he Court considered Plaintiffs' Amended Complaint to wipe the slate clean, and to provide Defendants a new, unobstructed opportunity to submit a 12(b)(6) motion.”); Coleman v. Pension Benefit Guar. Corp., 196 F.R.D. 193, 196 (D. D.C. Aug. 10, 2000) (“Given the lack of waiver and the fact that defendant's defense[ ] will still require adjudication in any event, many courts permit the defense of failure to state a claim upon which relief can be granted to be asserted in a subsequent motion as a means of preventing unnecessary delay in the proceedings.” ); In re Westinghouse Securities Litigation, 1998 WL 119554, at *6 (W.D. Pa. Mar. 12, 1998) (“there is simply no reason to put the defendant to the time and expense of filing an answer, or both defendant and plaintiff to the time and expense of addressing an issue to be raised later in a motion for judgment on the Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 7 of 15 PageID #: 471 -4- 200659.00004/104950257v.1 pleadings, when that issue can easily be resolved now”); Penn-Mont Benefit Serv., Inc. v. Crosswhite, 2003 WL 203570, at *5-6 (E.D. Pa. Jan. 29, 2003) (resolving defense of failure to state claim through motion to dismiss when basis for motion had not been asserted in defendants' first motion to dismiss for improper venue); Fischbach v. City of Toledo, 2009 WL 2999166, at *1 (N.D. Ohio Sept. 15, 2009) (the court “considers Plaintiff's Amended Complaint to ‘wipe the slate clean, and provide Defendant[ ] a new, unobstructed opportunity to submit a 12(b)(6) motion’”) (quoting Stoffels ex rel., 430 F. Supp. 2d at 648); Ass'n of Irritated Residents v. C&R Vanderham Dairy, 2006 WL 2644896, at *7 (E.D. Cal. Sept. 14, 2006) (“Where a successive Rule 12(b)(6) motion is not brought in bad faith or for dilatory purposes, and resolution of the motion would expedite the case, a court may exercise its discretion and relax the commands of Rule 12(g) in order to resolve the successive motion.”). Furthermore, in Walzer v. Muriel Siebert & Co., 447 Fed. Appx. 377, 384 (3d Cir. 2011), the Third Circuit affirmed a decision by a district court to consider successive Rule 12(b)(6) motions, even when filed years apart and after the first motion had been resolved. The Third Circuit reasoned that addressing the second motion to dismiss “is as though defendants had filed answers admitting those allegations and then filed their motions under Rule 12(c) rather than Rule 12(b)(6). Requiring them to take those additional steps would have served no practical purpose under the circumstances presented here.” Id. (emphasis added). Similarly, in Leyse v. Bank of America Nat. Ass’n, 804 F.3d 316, 322 (3d Cir. 2015), relied upon by Blackbird, the Third Circuit held that a district court’s decision to consider successive Rule 12(b)(6) motions is usually harmless: [s]o long as the district court accepts all of the allegations in the complaint as true, the result is the same as if the defendant had filed an answer admitting these allegations and then filed a Rule 12(c) motion for judgment on the pleadings, which Rule 12(h)(2)(B). Requiring these additional steps Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 8 of 15 PageID #: 472 -5- 200659.00004/104950257v.1 would serve little purpose here. Id. (emphasis added).3 Accordingly, this Court should deny Blackbird’s motion to strike. B. The Asserted Claims Are Invalid Under 35 U.S.C. § 101 as Being Directed to Patent-Ineligible Subject Matter The asserted claims are directed to the abstract idea of a mathematical algorithm for calculating distance traveled. The remaining claim elements, individually and in combination, fail to transform the nature of the asserted claims into a patent-eligible application of the abstract idea. Accordingly, the FAC should be dismissed with prejudice under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted. 1. Blackbird Failed to Substantively Respond to TomTom’s Section 101 Arguments Choosing to rely on its motion to strike TomTom’s Section 101 invalidity arguments, Blackbird does not substantively address TomTom’s Section 101 arguments and instead incorporates by reference its Section 101 responses in three other cases.4 See D.I. 28, at 15. By doing so, Blackbird circumvents the Court’s local rules, and exceeds the page limit by up to 60 additional pages through its improper incorporation by reference - one of which Blackbird will 3 Denying Blackbird’s motion to strike serves the policy reasons behind Rule 12(g)(2) and does not undermine the Third Circuit’s objective of having district courts resolve all motion to dismiss arguments at the same time. See Leyse, 804 F.3d at 322 n.5 (cautioning, in dicta, that district courts “should enforce Rule 12(g)(2) even if their failure to do so is not a ground for reversal.”). Indeed here, unlike in Leyse, defendants in co-pending cases are raising the same Section 101 issue that TomTom asks this Court to consider in its motion to dismiss. Blackbird is not prejudiced, and in fact has already substantively responded to the other defendants. In addition, unlike in Leyse, this Court did not address the first motion to dismiss on the merits because Blackbird filed its FAC, which purportedly mooted the first motion to dismiss. Therefore, Blackbird did not expend any resources opposing the first motion to dismiss. In contrast, the defendant in Leyse filed its first 12(b)(6) motion more than two years before the second. The court addressed both the first and second motions on the merits. On appeal, the Third Circuit considered the merits of the second motion to dismiss, despite its dicta in footnote 5. The procedural posture presented here involves none of the complexities, significant time delays, and wasted resources present in Leyse, and should therefore not apply. The Third Circuit’s concerns expressed in footnote 5 do not extend to the present circumstances. 4 In another response, Blackbird states “four defendants have asserted a Section 101 defense,” each filing “different briefs alleging different facts and making different arguments.” (Case 1:16-cv-00686, D.I. 26 at 1). Yet, Blackbird declines to address TomTom’s arguments. Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 9 of 15 PageID #: 473 -6- 200659.00004/104950257v.1 not have filed by TomTom’s due date.5 This Court recently held that it “cannot permit this practice as it effectively subverts the briefing page limits.” Flintkote Co. v. Aviva P.L.C., No. CV 13-103, 2015 WL 1405922, at *1 (D. Del. Mar. 25, 2015) (declining to consider plaintiff’s earlier briefing that it sought to incorporate by reference). See also Masimo Corp. v. Philips Elec. N. Am. Corp., 62 F. Supp. 3d 368, 376-77 (D. Del. Mar. 31, 2014) (briefs cannot be incorporated by reference as a way of avoiding page limits). Accordingly, this Court should disregard Blackbird’s attempt to incorporate three separate responses by reference. In the event this Court permits Blackbird’s incorporation by reference, TomTom attempts herein to address the arguments presented in Blackbird’s other responses, to the extent practical. 2. Alice Step One: the Asserted Claims are Directed to the Abstract Idea of Using an Algorithm to Calculate Distance Traveled Blackbird’s arguments rest on a legally incorrect test. See, e.g., Case 1:16-cv-00686, D.I. 26 at 8 and 17. In essence, Blackbird would have this Court turn the Alice analysis on its head by first focusing on the claimed subject matter with complete disregard to the underlying invention, and then looking to whether an abstract idea is contained within. This is not the test. The proper Alice analysis, as previously explained in TomTom’s opening brief (D.I. 20 at 5-6), is to look to the “underlying invention for patent-eligibility purposes” regardless of whether a claim literally invokes a process, machine, manufacture, or composition of matter. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011); see also ART+COM Innovationpool GmbH v. Google Inc., No. CV 14-217, 2016 WL 1718221, at *3 (D. Del. Apr. 28, 2016) (“When assessing the claimed subject matter, for purposes of § 101, a court should examine the ‘heart’ of the claims.”) (citing Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014)). 5 Blackbird cannot incorporate by reference a response that has not yet been filed. Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 10 of 15 PageID #: 474 -7- 200659.00004/104950257v.1 Blackbird criticizes the defendants for allegedly disregarding the hardware elements in Alice Step One and not considering the claims as a whole. But Blackbird puts the cart before the horse. The “heart” of each asserted claim is an algorithm for calculating distance by multiplying the number of steps by a stride length, where the stride length is calculated from stride rate to provide information (e.g., distance). The alleged complexity of the algorithm does not matter; it is still an algorithm, and algorithms are undeniably abstract ideas. See Parker v. Flook, 437 U.S. 584, 595, 98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978) (“Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.”). In identifying the abstract idea, the defendants are not, as Blackbird argues, disregarding certain claim elements. The defendants are following Federal Circuit precedent that instructs courts to “look at the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal quotations omitted). The only claimed advance, as the specification and prosecution history make clear, is the manner in which distance is calculated (an abstract idea). 3. Alice Step Two: the Remaining Elements Fail to Transform the Abstract Idea Into a Patent-Eligible Application of the Abstract Idea After identifying the abstract idea, step two considers whether the “elements of the claim, considered ‘both individually and as an ordered combination,’ add enough to ‘transform the nature of the claim into a patent-eligible application.’” Affinity Labs, 838 F.3d at 1257 (quoting Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2355 (2014)). The “inventive concept must do more than simply recite ‘well-understood, routine, conventional activity.’” Shortridge v. Foundation Construction Payroll Service, LLC, 655 Fed. Appx. 848, 852 (Fed. Cir. 2016) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S. Ct. 1289, 1296 (2012)). Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 11 of 15 PageID #: 475 -8- 200659.00004/104950257v.1 Multiple defendants cite Affinity Labs for invalidating system claims that incorporate multiple hardware elements. Blackbird attempts to distinguish from Affinity Labs by arguing the transmitter and receiver in Affinity Labs says nothing about the conventionality of a transmitter or receiver in a pedometer. But Affinity Labs is not relied upon to show the conventionality of Blackbird’s hardware elements; it is relied upon for holding that conventional hardware elements cannot transform an abstract idea into a patent-eligible application of an abstract idea. In Affinity Labs, the Federal Circuit first looked at the claimed advance over the prior art.6 Despite the claim reciting many hardware elements, including a broadcast system, a cellphone, a network based resource, a non-transitory storage medium, a display, and more, the Federal Circuit found “[t]he concept of providing out-of-region access to regional broadcast content is an abstract idea.” Affinity Labs, 838 F.3d at 1258. The Federal Circuit moved to Alice Step Two and found the claim simply recites “generic features of cellular telephones” used “to implement the underlying idea.” Id. at 1262. Similarly, Blackbird’s asserted claims simply recite generic features of pedometers used to implement the underlying abstract idea. As the Federal Circuit made clear in Affinity Labs, that is not enough. C. Blackbird Fails to Plead Facts Sufficient to Support Direct, Induced, and Willful Infringement Blackbird fails to identify any “factual content” that can support a reasonable inference that the accused devices meet each limitation of any of the asserted claims. See Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937 (2009) (emphasis added). Accordingly, Blackbird’s claims fail to meet the Iqbal/Twombly pleading standard and should be dismissed pursuant to Fed. R. Civ. 6 The Federal Circuit summarized the claim as directed to “a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content.” Affinity Labs, 838 F.3d at 1256 (Fed. Cir. 2016). Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 12 of 15 PageID #: 476 -9- 200659.00004/104950257v.1 P. 12(b)(6). Exemplary claim 2 requires, among other elements, “a data processor programmed to calculate a distance traveled by multiplying a number of steps counted by the step counter by a stride length that varies in accordance with a stride rate, wherein the stride length is determined with reference to a plurality of calibrations that each calculate a stride length as a function of a known stride rate.” ’212 patent, at 7:11-14 (emphasis added).7 Blackbird’s sole allegation that the above-quoted elements are met by each of the accused devices relies on “information and belief” and “logic.” However, there is no factual content that supports Blackbird’s “unwarranted inferences [and] unsupported conclusions.” Fowler v. UPMC Shadyside, 578 F.3d 203, 211 (3d Cir. 2009). Given a third chance, by and through its response, Blackbird fails to provide a “hint” of how “stride length would necessarily vary with the stride rate (speed) of the user,” as required by the claims. See Raindance Techs., Inc. v. 10x Genomics, Inc., No. CV 15-152, 2016 WL 927143, at *2 (D. Del. Mar. 4, 2016). According to Blackbird, “the claims of the ’212 Patent improve the accuracy of the pedometer’s distance calculation by automatically accounting for the user’s speed variations (e.g. walking versus running) by using the appropriate stride length in calculating distance.” Case 1:16- cv-00689-GMS, D.I. 35 at 18-19. As Blackbird concedes, TomTom’s accused devices “calculate distance travelled by multiplying a number of steps counted by a stride length.” D.I. 28 at 17. There is no factual content, however, to conclude that TomTom’s accused devices use “stride rate” or a “user’s speed variations” in its distance calculations, as Blackbird admits is required by the claims.8 Indeed, Blackbird’s own exhibits contradict its “unwarranted inferences, unsupported 7 Claims 5 and 6 recite similar claim language, generally requiring a stride length that varies in accordance with stride rate, where the stride length is calculated with reference to a range or plurality of stride rates. Due to the common core of the claim language, and Blackbird’s reliance on the same evidence, each asserted claim will be treated together. 8 Blackbird contradicts itself by first arguing that it purportedly performed “a thorough pre-suit investigation of the accused TomTom devices,” but then attempts to excuse its lack of evidence or factual content due to its ignorance of how TomTom’s accused devices actually work. See D.I. 28. at 15-16. Blackbird cannot have it both ways. Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 13 of 15 PageID #: 477 -10- 200659.00004/104950257v.1 conclusions or legal conclusions disguised as factual allegations.” See Baraka v. McGreevey, 481 F.3d 187, 211 (3d Cir. 2007). Blackbird’s failure to provide any factual content to support its conclusions is significant in light of its admissions that there are other ways of calculating distance in the field of pedometers. Indeed, in response to Timex’s motion to dismiss, Blackbird argues that “prior art pedometers consisted of . . . different distance determination techniques [i.e., distance calculations] and different calibration procedures (if any)” in an effort to distinguish its claims from the prior art. Case 1:16-cv-00689-GMS, D.I. 35 at 3. It further distinguishes the claims from prior art that describes distance calculations based on single, fixed stride length. Id. According to Blackbird, a “single, fixed stride length may underestimate or overestimate distance travelled depending on how quickly or slowly the user is moving . . . .” Id. at 4. Blackbird argues that these “designs require an overly complex calibration process.” Id. According to Blackbird, there are nearly 70 references cited on the face of the ’212 patent relating to pedometer designs. Since, according to Blackbird, there are different ways to calculate distance (some of which include calibration processes), it cannot simply rely on a generic description of how TomTom’s products calculate distance, nor can it simply rely on a “calibration” step; instead, Blackbird must provide “[f]actual allegations [sufficient] to raise a right to relief above the speculative level.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007) (citations omitted). Blackbird has failed to do so, both in its original complaint and its FAC. The Court should therefore grant TomTom’s motion to dismiss. III. CONCLUSION For the foregoing reasons, the FAC should be dismissed with prejudice pursuant to Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted. Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 14 of 15 PageID #: 478 -11- 200659.00004/104950257v.1 Respectfully submitted, Dated: January 27, 2017 BLANK ROME LLP /s/ Larry R. Wood, Jr. By: Larry R. Wood, Jr. (DE #3262) LWood@BlankRome.com Adam V. Orlacchio (DE #5520) Orlacchio@BlankRome.com 1201 N. Market Street, Suite 800 Wilmington, Delaware 19801 Tel: (302) 425-6400 Attorneys for Defendant, TomTom, Inc. Case 1:16-cv-00687-GMS Document 31 Filed 01/27/17 Page 15 of 15 PageID #: 479