Sentius International, LLC v. Apple Inc.

Background

Sentius brought a patent-infringement action against Apple concerning U.S. Patent No. RE43,633 and U.S. Patent No. 7,672,985. The accused products included Apple iOS devices, such as iPhones, and online applications, such as iCloud Keynote. Sentius alleged infringement through spell-check functionality.

The second amended complaint alleged that Apple directly infringed method claims by using the claimed methods through software in the accused products. It also alleged that Apple was responsible for users’ performance of method steps because Apple’s software design directed or controlled the users. Apple moved under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a complaint does not state a legally sufficient claim.

Direct Infringement of the ’633 Patent Method Claims

The court explained that direct infringement of a method claim requires all steps of the claimed method to be performed by, or attributable to, one entity. Selling a product or software that can perform a patented method does not itself constitute direct infringement. The court relied on Federal Circuit decisions explaining that software provides instructions to hardware and is not itself the sequence of actions making up the patented method.

The court held that Sentius did not adequately allege that Apple actually operated the devices, controlled equipment that performed at least one method step, or directed or controlled users. Allegations that Apple provided or designed software, or that accused products performed method steps through software instructions, were insufficient. The court therefore granted Apple’s motion to dismiss Sentius’s direct-infringement allegations for the ’633 Patent method claims.

Joint Infringement of the ’633 and ’985 Patent Method Claims

For joint infringement, Sentius had to allege facts supporting a reasonable inference that all method steps were performed and that Apple either directed or controlled the other actors or participated in a joint enterprise attributing every step to Apple. Direction or control requires, among other things, conditioning participation in an activity or receipt of a benefit on performance of a patented step and establishing how or when that step is performed.

Sentius argued that users had to click a red squiggly line under a misspelled word to receive spelling or grammar suggestions. The court found that the second amended complaint did not allege that the benefit was conditioned on that user action. The complaint said that Apple’s design allowed users to select a word, which suggested that users selected the term freely rather than under Apple’s direction or control. The court also found that Sentius’s allegations concerning the ’985 Patent did not identify which claim limitation allegedly required user input and did not align with the language of claim 1. The court therefore granted dismissal of the joint-infringement allegations for the method claims of both patents.

Leave to Amend and Disposition

The court granted Sentius permission to amend. It found that amendment was not necessarily futile because Sentius might be able to plead allegations concerning divided infringement or steps performed on equipment controlled by Apple, such as servers.

Judge Yvonne Gonzalez Rogers granted Apple’s partial motion to dismiss the direct-infringement allegations for the ’633 Patent method claims and the joint-infringement allegations for the ’633 and ’985 Patent method claims, without prejudice. Sentius could file an amended complaint within 21 days, and Apple’s response would be due within 21 days after that filing.