Google LLC v. Princeps Interface Technologies LLC

Background

The dispute involved U.S. Patent No. 6,703,963, which concerned a portable version of a traditional two-handed QWERTY keyboard. Princeps Interface Technologies LLC, referred to in the opinion as Princeps I, previously sued Google LLC for infringement in the District of Delaware and voluntarily dismissed that action without prejudice. Google then filed this action seeking a declaratory judgment of noninfringement. The patent was later reassigned to Princeps Secundus LLC, referred to as Princeps II.

Princeps II filed counterclaims accusing Google's information-input devices—including Pixel phones with Google or third-party applications having keyboard functions and an operating system such as Android—of direct infringement, willful infringement, induced infringement, and contributory infringement. Google moved under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a pleading does not state a legally sufficient claim.

Willful Infringement

The court explained that a willful-infringement claim must plausibly allege both that Google knew about the patent and that its conduct was egregious. Princeps II adequately alleged Google's knowledge because the earlier Delaware complaint specifically identified the same patent. But Princeps II did not plead specific facts showing egregious conduct.

Princeps II relied primarily on an allegation that Google had updated its phone software after the Delaware action was filed to remove a language-switch key. The court held that this allegation did not establish egregious conduct. If the software change was an effort to design around the patent, the court stated, that could support Google's good-faith effort to avoid infringement rather than willfulness. The court therefore granted Google's motion to dismiss the willful-infringement counterclaim with leave to amend.

Induced Infringement

For induced infringement, the court stated that a claimant must plausibly allege direct infringement and that the accused party knowingly induced infringement with the specific intent to encourage it. Princeps II alleged generally that Google aided and abetted partners and customers through instructional materials or services related to the accused products.

The court found those allegations too general because Princeps II did not identify specific instructional materials or services or explain what they contained. The court also noted that Google's filing of an action seeking a declaration of noninfringement could support a reasonable, good-faith belief that it was not infringing, which can negate the specific intent required for induced infringement. The court granted Google's motion to dismiss the induced-infringement counterclaim with leave to amend and required any amendment to plead facts plausibly showing Google's specific intent.

Contributory Infringement

Contributory infringement requires allegations that the accused party supplied a material component for practicing the patented invention, knew it was especially made or adapted for infringing use, and knew it was not a staple commercial product capable of substantial non-infringing use.

The court found that Princeps II's allegations largely repeated those statutory requirements without factual support. In particular, Princeps II did not provide facts showing that Google knew the accused products were not staple articles of commerce capable of substantial non-infringing uses. The court granted Google's motion to dismiss the contributory-infringement counterclaim with leave to amend.

Disposition

Judge Edward M. Chen granted Google's motion to dismiss Princeps II's willful, induced, and contributory infringement counterclaims with leave to amend. Any amended pleading had to comply with Federal Rule of Civil Procedure 11 and be filed within 30 days of the order. The opinion states that the order disposed of Docket No. 50.