Mira Advanced Tech. Sys. v. Google LLC

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MIRA ADVANCED TECHNOLOGY SYSTEMS, INC., Plaintiff, v. GOOGLE LLC, Defendant.

No. 1:21-CV-07931 (ALC)

United States District Court, S.D. New York

August 31, 2022

OPINION AND ORDER

ANDREW L. CARTER, JR., UNITED STATES DISTRICT JUDGE

BACKGROUND

Plaintiff Mira Advanced Technology Systems, Inc (“Mira”) brings an action against Defendant Google, LLC. (“Google”) for direct and indirect patent infringement under 35 U.S.C. § 1. At issue is United States Patent No. 10,594,854, which is a personal organizer for mobile devices with “a location-based reminder function.” ECF No. #1 Ex. A (the “854 patent”). Before the Court is Defendant's Motion to Dismiss for Failure to State a Claim pursuant to Federal. R Civ. P. 12(b)(6).

I. Factual Background

A. The Parties

Plaintiff Mira is a West Virginia corporation. Its principal place of business is also in West Virginia. Relevant here, Mira is the owner of all right, title, and interest of the ‘854 patent, and thus holds all rights to sue and recover damages for infringement of the aforementioned patent.

Google, the Defendant, is multinational technology company; it has a principal place of business in California, and it is a Delaware corporation.

B. The ‘854 patent

On March 17, 2020, the U.S. Patent and Trademark Office (the “PTO”) issued the ‘854 patent to inventor Nitesh Ratnaker. ‘854 Patent. The ‘854 patent is a “location specific personal organizer system for communication devices.” ‘854 Patent. Utilizing its built-in global positioning system (“GPS”) mobile devices can determine “if any task in [the] personal organizer is due at its current location” and alert the user. ‘854 Patent. Like an address book, each “contact list entry” in Mira's organizer system has data fields for the location's name, physical address, geocode, contact details, website URL and any reminders or tasks. Users can input tasks in multiple forms: text or images, videos, or audio. To operate Mira's patent relies on geocoding, which is a process for determining the unique geographic coordinates for place names or street addresses. At the least, users must enter the address of a physical location and a task into Mira's personal organizer system. A physical address in a contact list entry initiates a search request sent to a geo-code database on a remote web server. GPS coordinates, alongside other information, corresponding to the physical address are then auto filled and saved in the relevant data fields for that contact list entry. Now, as a user goes about their daily life as soon as their device detects its user has ventured into a saved location, a notification denoting whatever task the user had previously associated with that location will appear. For example, a could set a reminder instructing them to buy stamps if they are near a post office.

The term ‘claim' is used in patent applications to delineate the scope of legal protections possessed by patent owners. Seven claims, one independent the rest dependent, are used for the ‘854 Patent. The examiner evaluating the Asserted Patent cites several references to prior art including, Yokoyama, Moran, Ratnakar, Jayanthi, Myllymaki, Massenzio, Blass, Yardeni, Jayanthi and Klassen. These patents include a parking location reminder (Ratnakar, US. Patent No. 7,411,518). An electronic diary that stores a user's schedule and retrieves and transmits address data for upcoming destinations to the user's navigation apparatus (Yokoyama, U.S. Patent No. 5,654,908). A mobile device that detects proximity to a point on a route and presents the associated audio track (Myllymaki, 2002/0102988 Al* 8/2002) and a mobile organizer system that alerts users based on the time or their proximity to a specified task location. (Blass, 2006/0058948). The main drawback to Blass' organizer is that inputting tasks associated with a location require users to be physically there. (Blass, 2006/0058948).

C. Infringement Allegations

Mira alleges that the Google Keep software application has and continues to infringe upon their ‘854 Patent in violation of 35 U.S.C. § 271(c).

Google Keep software application (“the Accused Infringing Software”), when running and being operated in a host smart communication device equipped with an on-board GPS module (after being pre-loaded or installed in the host smart communication device), causes the host smart communication device to practice one or more respective methods claimed in one or more of claims 1, 3, 5 and 7 of the Asserted Patent (hereinafter “the Asserted Claims”) when a specific functional component (“the Accused Infringing Component”) of the Accused Infringing Software.. .is invoked to carry out its functions.

ECF No. 28 at 10 (hereinafter “Am. Compl.”). Allegedly, Google's software commits infringement by practicing “one or more of the Asserted Claims by performing, either literally or under the doctrine of equivalents, each and every step of the same respective one or more claimed methods, through running and operating of the Accused Infringing Software (installed, or otherwise incorporated or embodied, in the Accused Infringing Devices), particularly its Accused Infringing Component.” Id. at 13. Mira contests Google's unauthorized production and sale of devices pre-loaded with the Accused Infringing Software and any subsequent import or export from the United States.

Plaintiff also claims that Google is in violation of 35 U.S.C § 271(b) by actively inducing its “unwary end-users” to commit infringement. Id. at 14. The affirmative acts described are: first, having the Accused Infringing Software pre-installed on Android smartphones and second, having the Accused Infringing Software available for download by unwary end-users within the United States, in at least Google's Play Store and Apple's App Store. Finally, Plaintiff alleges that Google's infringement was and continues to be willful and deliberate. Since at least January 18, 2021, the Defendant has had actual notice of their infringement of the ‘854 Patent. Thus, Plaintiff argues the case is exceptional under 35 U.S.C. § 285.

D. Procedural History

On March 25, 2021, Mira filed A complaint against sole-defendant Google. See ECF No. 1 (“Compl.”). Filed in the Eastern District of Virginia and assigned to District Judge T. Ellis, III and Magistrate Judge John Anderson, the complaint alleged infringement against a sole defendant. In response Google filed a Motion to Dismiss for Failure to State a Claim on May 28, 2021. The Defendant posited two main arguments. First, the ‘854 Patent concerned subject matter ineligible for patent protection under 35 U.S.C. § 101 and second, Plaintiff had failed to adequately plead direct or indirect infringement. Google also filed a concurrent motion to transfer.

The Court received Mira's amended complaint on June 25, 2021, and Google's motion in opposition on July 23, 2021. Am. Compl. ECF No. 30. These motions to dismiss and transfer were denied by the court. See ECF No. 29. Google then renewed their motion to transfer the case pursuant to 28 U.S.C. § 1404(a) with Mira submitting a response on August 17, 2021. On September 22, 2021, District Judge T. S. Ellis, III granted a transfer to the Southern District of New York. Accordingly, the Court deemed Defendant's motion to dismiss unnecessary to address. Currently before this court is Defendant's Motion to Dismiss the Plaintiff's amended complaint in its entirety with prejudice and without leave to amend. ECF No. 61.

II. Applicable Legal Standards

A. Motion to Dismiss

For a 12(b)(6) motion to dismiss to prevail “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) (quoting BeZZAtZ Corp. v. Twombly, 550 U.S. 554, 570 (2007)). If a “plaintiff pleads factual content that allows the Court to draw the reasonable inference that the defendant is liable for the misconduct alleged,” then the claim has facial plausibility. Ik. at 678. Courts “may consider the facts as asserted within the four corners of the complaint together with the documents attached to the complaint as exhibits, and any documents incorporated in the complaint by reference,” to decide the motion. Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010) (citation and internal quotation marks omitted). District courts deciding issues in patent cases should “appl[y] the law of the circuit in which it sits to nonpatent issues and the law of the Federal Circuit to issues of substantive patent law.” In re Omeprazole Patent Litig., 490 F.Supp.2d 381, 399 (S.D.N.Y. 2007) (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1378-79 (Fed. Cir. 2005)); see, e.g., Desenberg v. Google, Inc., No. 09-CV-10121, 2009 U.S. Dist. LEXIS 66122, 2009 WL 2337122, at 5 (S.D.N.Y. July 30, 2009). Travel Sentry, Inc. v. Tropp, 527 F.Supp.3d 256, 262 (E.D.N.Y. 2021).

B. Validity of Patents

35 U.S.C. § 101 states a patentable invention is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Judicial exceptions to patentability are “laws of nature, abstract ideas and natural phenomena.” Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014). Even if every other legal requirement of patentability is met, a patent claim without patent-eligible subject matter as described in §101 must be rejected. In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) affirmed by Bilski v. Kappos, 561 U.S. 593 (2010). Patent eligibility can be decided on a Motion to Dismiss “when there are no factual allegations that, taken as true, prevent resolving the eligibility questions as a matter of law.” Aatrix Software, Inc. v. Green Shades Software,...