Smart Wearable Technologies Inc. v. Fitbit, Inc.

Brief / Memorandum in Opposition re Brief / Memorandum in Support, 27 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM .

W.D. Va.March 3, 2017

IN THE UNITED STATES DISTRICT COURT WESTERN DISTRICT OF VIRGINIA CHARLOTTESVILLE DIVISION SMART WEARABLE TECHNOLOGIES INC., Plaintiff, v. FITBIT, INC., Defendant. § § § § § § § § § Case No. 3:16-cv-00077-GEC JURY TRIAL DEMANDED PLAINTIFF’S OPPOSITION TO DEFENDANT FITBIT INC.’S MOTION TO DISMISS PLAINTIFF’S ORIGINAL COMPLAINT UNDER FED. R. CIV. P. 12(b)(6) Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 1 of 21 Pageid#: 176 ii TABLE OF CONTENTS TABLE OF AUTHORITIES ................................................................................... iii I. INTRODUCTION ........................................................................................... 1 II. LEGAL STANDARD ..................................................................................... 2 III. ARGUMENT ................................................................................................... 4 A. SWT’s Complaint has adequately pled all elements of induced infringement .......................................................................................... 5 1. SWT has adequately pled knowledge of the ‘882 Patent by Fitbit ................................................................................................. 7 2. SWT has adequately pled that Fitbit acted with the specific Intent that end users of the Accused Products infringe the ‘882 Patent by Fitbit ................................................................................. 8 B. SWT’s Complaint has adequately pled all elements of contributory infringement ........................................................................................ 11 IV. CONCLUSION .............................................................................................. 15 CERTIFICATE OF SERVICE ................................................................................ 17 Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 2 of 21 Pageid#: 177 iii TABLE OF AUTHORITIES Cases: Ashcroft v. Iqbal, 556 U.S. 662 (2009)......................................................................................... 3 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)..................................................................................... 3, 4 Conley v. Gibson, 355 U.S. 41 (1957)........................................................................................... 3 DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) ....................................................................... 6 e.Digital v. Intel Corp., No. 13-cv-2905-H-BGS, 2014 U.S. Dist. LEXIS 81049 (S.D. Cal. April 23, 2014) ............................................................................. 10 Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) ............................................................... 11, 14 Global-Tech Appliances, Inc., 563 U.S. at 766 ................................................................................................ 6 i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) ....................................................................... 14 Jenkins v. LogicMark, LLC, Civil Action No. 3:16-CV-751-HEH, 2017 U.S. Dist. LEXIS 10975 (E.D. Va. Jan. 25, 2017) .................................................................................. 3 Koninklijke Philips N.V. v. Zoll Med. Corp., 656 F. App’x 504 (Fed. Cir. 2016) .......................................................... 11, 14 Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) ................................................................. 6, 14 McZeal v. Spring Nextel Corp., Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 3 of 21 Pageid#: 178 iv 501 F.3d 1354 (Fed. Cir. 2007) ....................................................................... 3 Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986) ....................................................................... 6 Rembrandt Soc. Media, LP v. Facebook, Inc., 950 F. Supp. 2d 876 (E. D. Va. 2013) ..................................................... 3, 7, 8 Republican Party of N.C. v. Martin, 980 F.2d 943 (4th Cir. 1992) ............................................................................ 3 Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325 (Fed. Cir. 2008) ..................................................................... 14 Skinner v. Switzer, 562 U.S. 521 (2011)......................................................................................... 3 Swierkiewicz v. Sorema N.A., 534 U.S. 506 (2002)......................................................................................... 4 TG. Slater, 385 F.3d 836 (4th Cir. 2004) ........................................................................... 4 Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) ..................................................................... 10 ZUP, LLC v. Nash Mfg., Inc., Civil Action No. 3:16-CV-125-HEH, 2017 U.S. Dist. LEXIS 5477 (E.D. Va. Jan. 13, 2017) .................................................................................. 6 Other Fed. R. Civ. P. 12(b) .................................................................................................. 4 Fed. R. Civ. P. 12(b)(6) .......................................................................................... 1, 3 Section 271(b) ............................................................................................................ 6 Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 4 of 21 Pageid#: 179 1 Plaintiff Smart Wearable Technologies, Inc. (“Plaintiff” or “SWT”) hereby provides this response to Defendant Fitbit, Inc.’s (“Fitbit”) Motion to Dismiss Plaintiff’s Complaint under Fed. R. Civ. P. 12(b)(6). For at least the reasons provided herein, Defendant’s Motion should be denied. I. INTRODUCTION Plaintiff SWT filed its Complaint on November 14, 2016 alleging that Fitbit has and continues to directly and indirectly infringe claim 8 of U.S. Patent No. 6,997,882 (“the ‘882 patent” or “the Patent-in-Suit”). Dkt. 1 at 3. The ‘882 patent relates to systems and methods of monitoring a subject (e.g., a person) using acquired six degree-of-freedom (“6-DOF”) data regarding the subject as well as acquired physiological data of the subject. More specifically, the ‘882 Patent discloses deriving 6-DOF data descriptive of the movement of a subject which is synchronized and displayed with physiological data, such as the heart rate of the subject, for example. Fitbit designs, manufactures and sells fitness tracking products, including at least the Blaze and Surge products (“the Accused Products”), that incorporate the technology of the ‘882 patent. Defendant’s Motion requests that the Court dismiss only Plaintiff’s indirect infringement claims while not challenging the sufficiency of SWT’s direct infringement claim. With regard to induced infringement, Fitbit alleges the Complaint fails to state a claim because facts plausibly showing pre-suit knowledge Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 5 of 21 Pageid#: 180 2 of the ‘882 Patent by Fitbit are not alleged nor are facts showing that Fitbit specifically intended its end users and customers to infringe the ‘882 Patent alleged. With regard to contributory infringement, Fitbit alleges the Complaint fails to allege facts showing the Accused Products have no substantial non-infringing uses and fails to allege that the Accused Products are especially made or adapted for use in a manner that infringes the ‘882 Patent. As discussed herein, however, Fitbit’s challenges are baseless. SWT’s Original Complaint is more than sufficient to put Defendant on notice as to the specifics of SWT’s claims for both induced and contributory infringement and meets all applicable legal standards. SWT has made sufficient allegations in its Complaint supporting its indirect infringement claims, including sufficient allegations relating to Fitbit’s knowledge of the ‘882 Patent, Fitbit’s intentional conduct in inducing infringement, and that the Accused Products comprise a component configuration especially adapted to infringe the ‘882 Patent and having no substantial non-infringing uses. All the requisite elements of SWT’s claims have been properly alleged such that there is ample factual basis supporting a reasonable inference that Defendant is liable for its infringing activities, and SWT should be permitted the chance to provide evidence in support of the same. Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 6 of 21 Pageid#: 181 3 II. LEGAL STANDARD To determine whether a Complaint fails to state a claim for which relief can be granted, regional circuit law is applied. McZeal v. Spring Nextel Corp., 501 F.3d 1354, 1355–56 (Fed. Cir. 2007). “The analytical framework for reviewing motions to dismiss for failure to state a claim is well settled in both the Fourth and Federal Circuits.” Jenkins v. LogicMark, LLC, Civil Action No. 3:16-CV-751-HEH, 2017 U.S. Dist. LEXIS 10975, at *4–5 (E.D. Va. Jan. 25, 2017). A motion to dismiss under Rule 12(b)(6) tests the sufficiency of a Complaint, only, and does not resolve contests surrounding the facts or the merits of a claim. Republican Party of N.C. v. Martin, 980 F.2d 943, 952 (4th Cir. 1992). The question answered by courts is, therefore, not whether the plaintiff will ultimately prevail, but whether the “Complaint is sufficient to cross the federal court’s threshold.” Skinner v. Switzer, 562 U.S. 521, 530 (2011). The Federal Rules of Civil Procedure “require[] only ‘a short and plain statement of the claim showing that the pleader is entitled to relief,’ in order to ‘give the defendant fair notice of what the ... claim is and the grounds upon which it rests.’” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). A Complaint must allege facts that, if true, plausibly satisfy each element of the claims for which relief is sought. Rembrandt Soc. Media, LP v. Facebook, Inc., 950 F. Supp. 2d 876, 880 (E.D. Va. 2013) (discussing Ashcroft v. Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 7 of 21 Pageid#: 182 4 Iqbal, 556 U.S. 662 (2009) and Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)). The factual allegations made must be “more than labels and conclusions” or “formulaic recitation[s] of the elements” such that they “be enough to raise a right to relief above the speculative level” but need not comprise detailed factual allegations. Twombly, 550 U.S. at 555, 570. The allegations within a Complaint are taken as true and viewed in the light most favorable to the plaintiff. T.G. Slater & Son v. Donald P. & Patricia A. Brennan LLC, 385 F.3d 836, 841 (4th Cir. 2004). A court should not dismiss a Complaint for failure to state a claim unless it appears beyond a doubt that “no relief could be granted under any set of facts that could be proved consistent with the allegations.” Swierkiewicz v. Sorema N.A., 534 U.S. 506, 514 (2002); see also Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007) (explaining that Complaints are not dismissed when they “have enough facts to raise a reasonable expectation that discovery will reveal evidence” supporting plaintiff’s claim for relief). “The central issue is whether, in the light most favorable to the plaintiff, the Complaint states a valid claim for relief.” Id. at 1356 (internal quotations omitted). As such, the Rule 12(b) issue before this Court is not whether SWT will ultimately prevail on its infringement claim, but instead whether SWT is entitled to offer evidence to support its allegations. Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 8 of 21 Pageid#: 183 5 III. ARGUMENT SWT’s Complaint provided a detailed recitation of facts explaining how Fitbit has directly and indirectly infringed claim 8 of the ‘882 patent in relation to Fitbit’s making, using, and selling the Surge and Blaze fitness tracker devices. Since only the indirect infringement claims are asserted to be deficient by Fitbit, the elements and allegations relating to direct infringement are not addressed herein. The adequacy of the allegations in the Complaint relating to Fitbit’s specific challenges to SWT’s indirect infringement claims are discussed below. Briefly, SWT adequately pleads induced infringement because the Complaint alleges actual knowledge of the ‘882 Patent by Fitbit in a manner accepted by the majority of jurisdictions, including the 4th Circuit, and because the Complaint alleges facts sufficient to demonstrate Fitbit plausibly acted with the requisite intent to induce infringement by users of the Surge and Blaze. SWT adequately pleads contributory infringement because the Complaint includes allegations that the Blaze and Surge product comprise a particular component configuration. Further, SWT alleges that the Accused Products are implemented with, or configured for use with, software whereby the devices are especially adapted for use in an infringing manner and for which there are no substantial non-infringing uses. Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 9 of 21 Pageid#: 184 6 A. SWT’s Complaint has adequately pled all elements of induced infringement. In order to adequately plead a claim of induced infringement, the Complaint must include allegations sufficient to support a claim of direct infringement by users of the Accused Products and, additionally, show knowledge of the ‘882 Patent by Fitbit along with specific intent by Fitbit to induce the infringing conduct of users of the Accused Products. ZUP, LLC v. Nash Mfg., Inc., Civil Action No. 3:16-CV- 125-HEH, 2017 U.S. Dist. LEXIS 5477, at *52–53 (E.D. Va. Jan. 13, 2017); see also DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (“inducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement”) (citations omitted)). The knowledge of the accused infringer may be shown by actual knowledge or willful blindness. Global-Tech Appliances, Inc., 563 U.S. at 766–71. Inducement involves the taking of affirmative steps to bring about the directly infringing conduct. Id. at 760. These elements may be shown by circumstantial evidence. See Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1318 (Fed. Cir. 2009) (citing Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986) (patentee “met its burden of showing infringement under section 271(b) with circumstantial evidence of extensive puzzle sales, dissemination of an Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 10 of 21 Pageid#: 185 7 instruction sheet teaching the method of restoring the preselected pattern with each puzzle, and the availability of a solution booklet on how to solve the puzzle”)). In the present case, each of these elements are satisfied by SWT’s Complaint. The sufficiency of the Complaint in alleging direct infringement by end users of the Accused Products has not been challenged and is, therefore, admittedly adequate. The knowledge and specific intent requirements are adequately pled, as discussed below. 1. SWT has adequately pled knowledge of the ‘882 Patent by Fitbit. Fitbit contends that SWT has not properly alleged knowledge by Fitbit of the ‘882 Patent because no facts are alleged in the Complaint that show Fitbit knew of the ‘882 Patent prior to the filing of the present lawsuit. Dkt. 28 at 5. This contention finds no basis in the law of the district courts of the 4th Circuit, as Fitbit acknowledges. Dkt. 28 at fn. 2. While there is disagreement between the district courts as to whether post-suit knowledge is sufficient to support claims of indirect infringement, the majority view is that “post-suit knowledge (i.e., knowledge provided by the filing of the lawsuit) satisfies the knowledge element for indirect infringement.” Rembrandt, 950 F. Supp. 2d at 881. The district courts of the 4th Circuit have adopted the majority view on this issue because knowledge of the patent and its claims are essential to a claim for indirect infringement regardless of how Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 11 of 21 Pageid#: 186 8 obtained. Id. at 882. “The filing and service of an infringement suit is merely one way of establishing this essential element of the indirect infringement claim.” Id. Here, as Fitbit admits, SWT has alleged knowledge of the ’882 Patent by Fitbit in paragraph 9 of the Complaint, alleging “Fitbit has had knowledge of, or was willfully blind to, the existence of the ‘882 Patent since the filing of this Complaint, if not earlier.” Dkt. 1 at 2; Dkt. 28 at 4. This allegation is sufficient to establish knowledge supporting an indirect infringement claim under the holding in Rembrandt. Id. Fitbit’s assertion that there exists any requirement of SWT to allege facts supporting pre-suit knowledge of the ‘882 Patent are baseless and find no statutory or case law support within the 4th Circuit. Additionally, the Complaint adequately alleges that Fitbit may have been aware of or has been willfully blind to the existence of the ‘882 Patent at an earlier time. This allegation is sufficient at the pleading stage to permit the case to move forward to discovery, whereby specific facts not publicly available and relating to Fitbit’s knowledge or willful blindness which are not publicly available may be uncovered. 2. SWT has adequately pled that Fitbit acted with the specific intent that end users of the Accused Products infringe the ‘882 Patent by Fitbit. Fitbit asks the Court to dismiss SWT’s inducement claim contending that the Complaint fails to “plead facts plausibly showing that Fitbit took actions specifically Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 12 of 21 Pageid#: 187 9 intended to induce infringement” while citing to the allegations made in paragraph 15 of the Complaint. Dkt. 28 at 7. Paragraph 15 of the Complaint states: 15. On information and belief, Fitbit possessed a specific intent to induce infringement by at a minimum, providing user guides and other sales-related materials, and by way of advertising, solicitation, and provision of product instruction materials, that instruct its customers and end users on the normal operation of at least the Accused Products including heart rate, active minutes, calories burned, heart rate zone training, and/or sleep tracking features that infringe the ‘882 Patent. Dkt. 1 at 4. This paragraph, in the context of the entirety of the Complaint, provides sufficient facts and allegations upon which a plausible claim for induced infringement is made. SWT alleged that Fitbit acted with the specific intent to induce infringement and provided a factual basis for this allegation—that Fitbit provides user guides and other materials instructing its customers and end users to use the heart rate, active minutes, calories burned, heart rate zone training, and/or sleep tracking features of the Accused Products that infringe the ‘882 Patent. This is clear from the preceding paragraph of the Complaint, which alleges that “end users of at least the Accused Products directly infringe at least claim 8 of the ‘882 Patent when using the Accused Products to, at least, monitor their heart rate, active minutes, calories burned, heart rate zone training, and/or sleep tracking.” Dkt. 1 at 3–4. Additionally, the Complaint alleges that Fitbit provides a mobile application which Fitbit instructs users to download, the use of which along with the Accused Products is alleged to directly infringe the ‘882 Patent. Dkt. 1 at 3. These allegations are Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 13 of 21 Pageid#: 188 10 more than sufficient to satisfy the pleading standards and avoid dismissal of SWT’s inducement claim at this early stage. Such business practices, if and when proven later in a case, are in fact sufficient to meet the intent requirement for induced infringement, and when alleged in a Complaint, are sufficient to reach the pleading requirement threshold. See e.g. e.Digital v. Intel Corp., No. 13-cv-2905-H-BGS, 2014 U.S. Dist. LEXIS 81049, at *9–10 (S.D. Cal. April 23, 2014) (denying a motion to dismiss allegations of induced infringement because the Complaint set forth “how defendant induced that infringement by providing them with product literature, instructional videos, operating manuals, installation guides, instructional and how-to videos, webcasts, and other instructions on how to use the accused product in an infringing manner.”) (internal quotations omitted). Fitbit asserts that these allegations do not plausibly show a specific intent to induce the end users to infringe relying on a Federal Circuit Court holding which states “instructions telling a consumer how to use the product in an infringing mode were insufficient to infer a specific intent to induce infringement.” Dkt. 28 at 6 (citing Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1329 (Fed. Cir. 2009). Fitbit fails to mention, however, that Vita-Mix was decided at the summary judgment phase and with the benefit of discovery rather than at the pleadings stage. While Vita-Mix is inapplicable in the present case, it further demonstrates that this case Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 14 of 21 Pageid#: 189 11 should, at a minimum, proceed through discovery before the merits of SWT’s inducement claim should be decided. Fitbit further asserts that it “could not have specifically intended to induce infringement of the ’882 patent until after Fitbit learned that the patent existed.” The knowledge of or willful blindness to the ‘882 Patent by Fitbit has been adequately pled, however, such that the present case should proceed to discovery. SWT will seek to ascertain precisely when Fitbit became aware of, or can be shown to have been willfully blind to, the existence of the ‘882 Patent, as discussed in the preceding section in furtherance of SWT’s inducement claim. As such, SWT respectfully submits that dismissal of its inducement claim at this early stage would be improper. B. SWT’s Complaint has adequately pled all elements of contributory infringement. To adequately plead contributory infringement a Complaint must allege: 1) “there is direct infringement,” 2) “the accused infringer had knowledge of the patent,” 3) “the component has no substantial noninfringing uses,” and 4) “the component is a material part of the invention.” Koninklijke Philips N.V. v. Zoll Med. Corp., 656 F. App’x 504, 522 (Fed. Cir. 2016) (quoting Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010). Fitbit only challenges whether SWT adequately alleged that the Accused Devices (or any infringing component thereof) lack substantial non-infringing uses and/or are specifically adapted for infringement, Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 15 of 21 Pageid#: 190 12 effectively admitting that all other elements of SWT’s contributory infringement claim are adequately pled. Fitbit asserts that the allegation made in paragraph 17 of the Complaint, reproduced below, is insufficient because it does not allege that Fitbit knew the Accused Products were especially adapted for use in infringing the ‘882 Patent and, instead, merely alleges that certain features of the Accused Products are especially adapted for infringing use. Dkt. 28 at 9. Paragraph 17 of the Complaint states: 17. Upon information and belief, the heart rate, active minutes, calories burned, heart rate zone training, and/or sleep tracking features of the Accused Products have no substantial non-infringing uses, and Fitbit knows that these features are especially made or especially adapted for use in a product that infringes the ‘882 Patent. Dkt. 1 at 4. Fitbit’s assertion amounts to little more than sleight of hand. Clearly a device which is implemented with specific features which, when performed, directly infringe the claims of a patent is especially adapted for use in an infringing manner. By configuring the Accused Products to perform the functions enumerated in paragraph 17, Fitbit has especially adapted the Surge and Blaze products for use in a manner that infringes claim 8 of the ‘882 Patent. This is made more clear when paragraph 17 is viewed in light of preceding paragraphs 13 and 14, which state: 13. Upon information and belief, the Accused Products are attachable to the wrist of a user and includes at least an accelerometer and gyroscope for providing data from which 6-DOF movement information descriptive of the movement of the user is obtained. Upon information and belief, the Accused Products include, at least, a heart rate sensor for obtaining physiological data of the user. The Accused Products synchronize the 6-DOF data with obtained physiological data of the subject and display the synchronized 6-DOF and physiological data and display the synchronized data on, at least, the Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 16 of 21 Pageid#: 191 13 displays of the Accused Products. Additionally, or alternatively, the synchronized data is displayed on an external device, such as a smart phone, tablet, or computer, via Fitbit’s software application (the Fitbit App). By way of example only, at least the Accused Products in the past directly infringed and continue to directly infringe at least claim 8 of the ‘882 Patent. 14. By providing at least the Accused Products, Fitbit has, in the past and continues to induce its customers and/or end users to infringe at least claim 8 of the ‘882 Patent. For example, end users of at least the Accused Products directly infringe at least claim 8 of the ‘882 Patent when using the Accused Products to, at least, monitor their heart rate, active minutes, calories burned, heart rate zone training, and/or sleep tracking. Dkt. 1 at 3–4 (emphasis added). These allegations make clear that the Accused Products are alleged to be implemented with a particular component and software configuration uniquely suited for accommodating use of the Accused Products in an infringing manner. For example, they comprise accelerometers and gyroscopes for deriving six degree of freedom movement information along with a heart rate sensor and are implemented with software routines for synchronizing this data. This configuration is described in the Complaint and is alleged to comprise no substantial non-infringing use. These allegations are sufficient for the pleading stage and entitle SWT to the benefits of discovery, through which additional evidence of uses of the Accused Products may be obtained. Fitbit further alleges that the “Accused Products have multiple uses, many of which are totally unrelated to the subject matter of the ’882 patent” and that SWT, therefore, cannot allege the Accused Products have no substantial non-infringing Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 17 of 21 Pageid#: 192 14 use. This assertion ignores the relevant case law for such devices. In cases where the asserted patent claims cover only one aspect or feature of the component or material or apparatus that the accused contributory infringer sells, courts seek to assure that the accused contributory infringer is not “‘permitted to escape liability as a contributory infringer merely by embedding [the infringing apparatus] in a larger product with some additional, separable feature before importing and selling it.’” Lucent, 580 F.3d at 1320 (quoting Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1337 (Fed. Cir. 2008)). The inquiry focuses on whether the infringing feature is “‘separate and distinct’” from other features of the composite product. Koninklijke, 656 F. App’x at 523–25 (quoting i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 849 (Fed. Cir. 2010), aff’d on other grounds, 564 U.S. 91 (2011)). Courts are “fairly liberal in finding the accused components separate.” Koninklijke, 656 F. App’x at 524 (See Fujitsu, 620 F.3d at 1330–31 (finding message fragmentation feature of wireless access point devices separate and distinct from other features of those devices); i4i, 598 F.3d at 848–49 (finding XML editor separate and distinct from other features of Microsoft Word); Lucent, 580 F.3d at 1321 (finding date-picker tool separate and distinct from other features of Microsoft Outlook); Ricoh, 550 F.3d at 1336–40 (vacating district court finding that optical disk drive has substantial non-infringing uses apart from patented disk-writing technology). Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 18 of 21 Pageid#: 193 15 These cases make clear that regardless of whether the Accused Products comprise additional features which may not infringe the ‘882 Patent, Fitbit may still be shown to contributorily infringe the ‘882 Patent through its making, using, and selling of the Accused Products which include the infringing features described in the Complaint. It is enough that the Complaint identifies features and functions of the Accused Products which are separate and distinct from other possibly non- infringing functions and are alleged to infringe claim 8 of the ‘882 Patent. These allegations put Fitbit on notice of the basis for the contributory infringement claim and relate facts and allegations sufficient to plausibly show contributory infringement by Fitbit. As such, respectfully, the contributory infringement claim is adequately pled such that it should proceed beyond the pleadings stage of this litigation. IV. CONCLUSION For the foregoing reasons, Plaintiff respectfully requests that the Court deny Defendant’s Motion in its entirety. In the event SWT’s direct or indirect infringement allegations in its Complaint are inadequate in any respect, this Court should not dismiss the Complaint outright, but should instead grant SWT leave to amend its Complaint. Dated: March 3, 2017 Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 19 of 21 Pageid#: 194 16 /s/ Mark D. Obenshain Mark D. Obenshain (VSB # 27476) Justin M. Wolcott (VSB # 83367) OBENSHAIN LAW GROUP 420 Neff Avenue, Suite 130 Harrisonburg, VA 22801 Telephone: (540) 208-0727 Facsimile: (540) 266-3568 Email: mdo@obenshainlaw.com Email: jmw@obenshainlaw.com Counsel for Plaintiff Smart Wearable Technologies Inc. Of Counsel: Michael T. Cooke (Admitted Pro Hac Vice) Corby R. Vowell (Admitted Pro Hac Vice) Richard A. Wojcio Jr. (Admitted Pro Hac Vice) FRIEDMAN, SUDER & COOKE Tindall Square Warehouse No. 1 604 East 4th Street, Suite 200 Fort Worth, TX 76102 Telephone: (817) 334-0400 Facsimile: (817) 334-0401 Email: mtc@fsclaw.com Email: vowell@fsclaw.com Email: wojcio@fsclaw.com Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 20 of 21 Pageid#: 195 17 CERTIFICATE OF SERVICE I hereby certify that on the 3rd day of March, 2017, I electronically filed the foregoing document with the clerk of the court for the U.S. District Court for the Western District of Virginia, using the electronic case filing system of the court. The electronic case filing system sent a “Notice of Electronic Filing” to the attorneys of record who have consented in writing to accept this Notice as service of this document by electronic means. /s/ Mark D. Obenshain Case 3:16-cv-00077-GEC Document 31 Filed 03/03/17 Page 21 of 21 Pageid#: 196