Traxcell Technologies, LLC. v. Google LLC

Background

Traxcell sued Google for allegedly infringing Claim 1 of U.S. Patent No. 10,820,147. The patent concerns a mobile wireless device and network that provide online and offline navigation, use traffic-congestion information to select routes, and allow location tracking to depend on preference settings. Traxcell alleged that Google Maps and Google’s server-side or cloud infrastructure practiced the claim.

Google moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint plausibly states a legal claim. The court considered claims for direct infringement, contributory infringement, induced infringement, and willful infringement.

Direct Infringement

The court held that Traxcell did not plausibly allege that Google directly infringed by “using” the claimed system. For a party to use a claimed system, the court explained, the party must control the system—meaning it can put the system as a whole into service—and obtain a tangible benefit from each claimed component. The complaint alleged that Google provided software that users could configure to practice the patent, but it did not adequately allege that Google controlled each element. The court therefore granted the motion to dismiss the direct-infringement claim.

Indirect Infringement

Contributory and induced infringement require knowledge of the patent. The court found that Traxcell’s allegations did not plausibly show that Google knew of the ’147 patent before the lawsuit. The patent issued on October 27, 2020, so an earlier patent’s issuance could not have notified Google of the later patent. The complaint also did not explain when or how the Patent and Trademark Office allegedly cited the patent application to Google, and the court found the allegation conclusory. The court granted the motion to dismiss the pre-suit induced-infringement claim and the contributory-infringement claim.

The court considered whether knowledge acquired through the lawsuit could support claims based on later conduct. It concluded that post-suit knowledge could support post-suit damages for induced infringement. The complaint described Google documentation explaining how users could enable and use location services and route navigation with traffic services. The court therefore denied the motion as to post-suit induced infringement.

The court nevertheless granted the motion as to post-suit contributory infringement because Traxcell merely repeated the legal requirement that Google Maps and Google’s server were not suitable for substantial non-infringing uses. The complaint itself described Google Maps functions that operate without location services, which undermined that allegation.

Willful Infringement

Willful infringement requires deliberate or intentional infringement. The court dismissed Traxcell’s willful-infringement claim to the extent it concerned pre-suit conduct because the complaint did not plausibly allege Google’s pre-suit knowledge of the patent. The court denied the motion as to post-suit willful infringement, finding that Traxcell alleged Google knew its conduct was infringing but continued anyway, which could constitute consciously wrongful conduct at the pleading stage.

Disposition

The court stated that Google’s motion to dismiss was granted as to the direct-infringement claim, the contributory-infringement claim, and the pre-suit induced-infringement claim. The motion was denied as to post-suit induced infringement and post-suit willful infringement. Traxcell was granted 20 days to amend its complaint, subject to its counsel’s obligations under Federal Rule of Civil Procedure 11. Judge Corley stated that the order disposed of Docket No. 31.