Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim

The Northern District of California dismissed a complaint of patent infringement for failing to adequately plead direct or joint infringement. Sentius Int’l LLC v. Apple Inc., No. 4:20-cv-00477 (N.D. Cal. June 2, 2020). The Court held that merely selling software did not constitute direct infringement and that Sentius did not adequately allege the requisite direction or control required for joint infringement.

Plaintiff Sentius alleged infringement of U.S. Patent Nos. RE43633 and 7,672,985 by Defendant Apple. Defendant filed a motion to dismiss under Rule 12(b)(6), alleging that Plaintiff failed to sufficiently plead direct and joint infringement of the asserted patents. Claim 62 of the ‘633 patent is too long to recite in full, but the relevant part to consider is “a computer-implemented method for linking textual source material to external reference materials for display….” Of note is that a “computer-implemented method” has specific requirements for direct and joint infringement, as the Court discussed in the decision.

Direct infringement of a method claim, as elucidated in the several Akamai decisions, requires all steps of the claimed method to be performed by or attributable to a single entity. Sale of a product that performs the method, such as software, is not direct infringement by the seller of the product. However, direct control by the seller of a device that performs the method could lead to direct infringement. Plaintiff argued that apps maintained on Apple servers are under Defendant’s control, but the Court agreed with the Defendant that Apple iOS devices are end user products outside of Defendant’s control. That is, software represents “instructions for executing a process—not the process itself” and the Court granted the motion dismissing the direct infringement claims.

Plaintiff also alleged that Defendant jointly infringed the asserted patents with users of Apple devices. Joint infringement requires allegations “to allow a reasonable inference that all steps of the claimed method are performed and…one party exercised the requisite direction or control over the others’ performance….” Plaintiff alleged that Defendant had such “direction nor control” by “establish[ing] the manner…and timing…of the performance” of the claimed method by presenting the steps on the iOS device screen. The Court summarily dismissed this argument, noting that allowing a user to perform the method suggests that the user performs the method without direction from Defendant. Without such control or direction, the Court granted the motion to dismiss the joint infringement claims.

Lessons for Practice

The Court seemed unenthusiastic about Plaintiff’s sparse pleadings, noting in a stinging footnote that “even under the liberal standard of notice pleading, the complaint cannot state a legally deficient theory and survive dismissal.” While the Court did grant leave to amend the pleadings, it gave Plaintiff another warning that “software allegations are not sufficient to allege use of a method claim.” This sentiment echoes several courts’ thoughts on the thoroughness of pleadings. Drafters of method claims should consider whether the ultimate infringer is a competitor or a consumer and whether it would be viable to enforce a method claim against that particular infringer.