Progme Corporation v. Fox Network, LLC

E.D. Michigan

Progme Corporation v. Fox Network, LLC

District Court, E.D. Michigan·Decided May 23, 2023·No. 2:18-cv-11057·Unknown

Opinion

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION PROGME CORPORATION,

Plaintiff, CASE NO. 18-11057 v. HON. DENISE PAGE HOOD TWENTY-FIRST CENTURY FOX, et al., Defendant. ___________________________________/ PROGME CORPORATION, Plaintiff, CASE NO. 18-11728 v. HON. DENISE PAGE HOOD GOOGLE, LLC, Defendant. __________________________________/ ORDER GRANTING DEFENDANTS’ MOTIONS TO DISMISS [ECF No. 40 in Case No. 18-11057 and ECF No. 34 in Case No. 18- 11728] and DISMISSING Case No. 18-11728 I. INTRODUCTION These are two patent cases, both assigned to the undersigned as companion. In

both cases, Plaintiff Progme Corporation (“Progme”) claims infringement of U.S. Patent No. 8,713,425 (the ‘425 patent). In broad terms, the ‘425 patent, titled “Audio/Video Program-Related Hyperlink Printer,” covers a system in which 1 hyperlinked content broadcast on radio or television programs can be printed. Progme claims that Defendants have used the patented technology when transmitting program

signals during broadcasting. In April 2018, Progme sued Defendant Twenty-First Century Fox, Inc. and other Fox entities (collectively, “Fox”). Progme v. Fox, 18- 11057 (the “Fox Case”). In June 2018, Progme sued Defendant Google, LLC

(“Google”). Progme v. Google, 18-11728 (the “Google Case”). Both cases were then stayed pending reexamination and reissue proceedings before the United States Patent and Trademark Office (“PTO”). The stay was lifted in each case on March 25, 2020.

See ECF No. 29 in the Fox Case and ECF No. 27 in the Google Case. On May 18, 2020, Fox and Google filed motions to dismiss. See ECF No. 40 in the Fox Case and ECF No. 34 in the Google Case. Both motions are fully briefed. Because the motions present essentially the same arguments, they will be considered

together. For the reasons set forth below, the Court GRANT’s Fox’s and Google’s motions to dismiss.1

II. BACKGROUND The named inventor of the ‘425 patent is David A. Reams, a former Michigan

1In light of this determination, Fox's pending motion for an extension of time to answer the second amended complaint (ECF No. 52 in the Fox Case) is MOOT. 2 attorney. Reams also prosecuted a series of applications leading to the ‘425 patent for nearly 13 years, until the ‘425 patent issued on April 9, 2014. In addition to being the

inventor and the prosecuting attorney, Reams is the President, Treasurer, Secretary, and Director of Progme. Progme has a history of litigation regarding the ‘425 patent, as set forth below.

In 2015, Progme sued a number of entities in this district, including Comcast, claiming infringement of the ‘425 patent. Progme v. Comcast, 15-13935 (the “Comcast Case”). Within two weeks of filing the complaint, Progme filed a notice

of voluntary dismissal, “dismissing with prejudice” all defendants except for Comcast. See ECF No. 4 in the Comcast Case. Comcast then filed a motion to transfer. The district court granted the motion and transferred the case to the Eastern District of Pennsylvania. See ECF No. 48 in the Comcast Case.

During the pendency of the Comcast Case, Comcast filed a request for ex parte reexamination of the ‘425 patent with the PTO. On May 1, 2018, the PTO ordered reexamination based on Comcast’s ex parte reexamination request. In addition to

Comcast’s reexamination proceeding, on April 4, 2018, Progme filed a reissue application for the ‘425 patent with the PTO. The day before filing the reissue application, on April 3, 2018, Progme filed the

Fox Case. Two months later, on June 1, 2018, Progme filed the Google Case. Shortly 3 thereafter, in early August 2018, the Court stayed the Fox and Google cases pending the outcome of the PTO proceedings, including both the ex parte reexamination and

the reissue application. See ECF No. 14 in the Fox Case and ECF No. 11 in the Google Case. On August 6, 2019, the PTO mailed a notice of allowance for the reissue application of the ‘425 patent. On November 19, 2019, the PTO issued the

reissue patent, RE47,735, which generally allows claims 1-25 of the ‘425 patent. Following the conclusion of the PTO proceedings, on December 4, 2018, Progme filed motions to lift the stay, to transfer, and for leave to amend in both cases.

See ECF No. 18 in the Fox Case and ECF No. 15 in the Google Case. The Court granted Progme’s motion to lift the stay, denied Progme’s motion to transfer, and granted Progme’s motion for leave to file amended complaints. See ECF No. 29 in the Fox Case and ECF No. 27 in the Google Case. Progme then filed amended

complaints in both cases. See ECF No. 30 in the Fox Case and ECF No. 28 in the Google Case. Notably, in granting Progme leave to file amended complaints, the Court observed that the original complaint in both cases were not models of clarity

and if Progme’s amended complaints were of the same ilk, they may not withstand a motion to dismiss. As noted above, Fox and Google have moved to dismiss the amended

complaints on the grounds that the amended complaints fail to state a plausible claim 4 for relief. Progme filed a short response to both motions as well as second amended complaints. Progme’s sole argument in response is that it had a right to file the second

amended complaints and the second amended complaints cure any defects in the amended complaints. III. APPLICABLE LAW

A Rule 12(b)(6) motion to dismiss tests the legal sufficiency of the plaintiff’s complaint. The Court must accept all well-pleaded factual allegations as true and review the complaint in the light most favorable to the plaintiff. Eidson v. Tennessee

Dep’t of Children’s Servs., 510 F.3d 631, 634 (6th Cir. 2007); Kottmyer v. Maas, 436 F.3d 684, 688 (6th Cir. 2006). As a general rule, to survive a motion to dismiss, the complaint must state sufficient “facts to state a claim to relief that is plausible on its face.” Bell Atlantic

Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). The complaint must demonstrate more than a sheer possibility that the defendant’s conduct was unlawful. Id. at 556. Claims comprised of “labels and conclusions, and a

formulaic recitation of the elements of a cause of action will not do.” Id. at 555. Although not outright overruling the “notice pleading” requirement under Rule 8(a)(2) entirely, Twombly concluded that the “no set of facts” standard “is best forgotten as

an incomplete negative gloss on an accepted pleading standard.” Id. at 563. The 5 Supreme Court has further stated that “[a] claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference

that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). IV. ANALYSIS

A. Whether Progme Had a Right to File the Second Amended Complaints Both Fox and Google argue that Progme did not have a right to file the second amended complaints without seeking leave under Fed. R. Civ. P. 15(a). Rule 15(a)

provides, in relevant part, that “[a] party may amend its pleadings once as a matter of course” within 21 days after service of a motion under Rule 12(b) (emphasis added). Rule 15(a)(2) further provides that “[i]n all other cases, a party may amend its pleading only with the opposing party’s written consent or the court's leave.” The

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