Viavi Solutions Inc. v. Platinum Optics Technology Inc.

• Court: District Court, N.D. California
• Decided: February 23, 2024
• Docket: 5:21-cv-06655
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 VIAVI SOLUTIONS INC., Case No. 21-cv-06655-EJD

8 Plaintiff, ORDER GRANTING MOTION TO 9 v. DISMISS

10 PLATINUM OPTICS TECHNOLOGY Re: ECF No. 146 INC., 11 Defendant.

12 13 Before the Court is Defendant Platinum Optics Technology Inc.’s (“PTOT”) motion to 14 dismiss Viavi Solutions Inc.’s (“Viavi”) Second Amended Complaint (“SAC”). ECF No. 146. 15 For the reasons discussed below, the Court GRANTS PTOT’s motion. 16 I. BACKGROUND 17 This Court has previously provided a detailed summary of the relevant facts in its order 18 granting PTOT’s motion for summary judgment. See ECF No. 142 (“MSJ Order”). The Court 19 will briefly summarize the facts relevant to PTOT’s motion to dismiss here. 20 A. Procedural History 21 Viavi initiated this action arising under 35 U.S.C. § 271(b) on August 27, 2021, seeking a 22 judgment that PTOT induced infringement of at least one claim of U.S. Patent Nos. 9,354,369 (the 23 “’369 patent”)1; 9,588,269 (the “’269 patent”); and 10,222,526 (the “’526 patent”). See generally 24 ECF No. 1, Compl. On October 4, 2021, Viavi amended its complaint to include allegations of 25 PTOT’s infringement of U.S. Patent No. 11,131,794 (the “’794 patent”). See generally ECF No. 26 21, Amended Complaint. On October 21, 2022, Viavi moved for leave to file a second amended 27 1 complaint based on newly discovered information. See ECF No. 87. One week later, on October 2 28, 2022, PTOT filed a motion for summary judgment of non-infringement. ECF No. 89. On 3 November 4, 2022, PTOT opposed Viavi’s motion for leave to amend. ECF No. 98. 4 On October 13, 2023, the Court granted Viavi’s motion for leave to file an amended 5 complaint. ECF No. 141. On the same day, the Court also granted PTOT’s motion for summary 6 judgment of non-infringement. ECF No. 142. Because the Court also granted Viavi’s motion for 7 leave to amend to add allegations of direct infringement, the Court’s ruling on PTOT’s MSJ did 8 not dispose of the case. See id. at 12. 9 B. Viavi’s Second Amended Complaint 10 On November 3, 2023, Viavi filed its SAC alleging PTOT is liable for direct infringement 11 of the ’269 patent, the ’526 patent, and the ’794 patent (the “Asserted Patents”). SAC ¶ 4. The 12 Asserted Patents generally relate to optical filters. Id. ¶ 5. The SAC alleges that, in September 13 2020, PTOT directly sent samples of wafers (hereinafter referred to as the “Accused Samples”) 14 from Taiwan to Company.2 Id. ¶ 23. Viavi alleges “upon information and belief” that these 15 Accused Samples have the same design of “one example” of a PTOT filter Viavi previously 16 accused of indirect infringement (“Previously Accused Filter”) in Viavi’s first amended complaint. 17 Id. ¶ 27. The alleged difference between the Accused Samples and the Previously Accused Filter 18 is the size. Id. Viavi attached to its SAC a claim chart comparing the claims of the Asserted 19 Patents to the Previously Accused Filter. SAC, Ex. 14. Exhibit 14 does not chart the Asserted 20 Patents to the Accused Samples. Rather, the SAC alleges that the Previously Accused Filter, as 21 charted in Exhibit 14 to the SAC, “represents” the Accused Samples. Id. ¶¶ 36, 44, 52 (“the 22 optical filter charted with respect to the Asserted Patents in Exhibit 14 represents a PTOT 23 [Accused Sample] in the United States”). 24 Viavi seeks past and future compensatory damages, including lost profits and amounting to 25 no less than reasonable royalties, prejudgment interest, and any other available damages based 26

27 2 As with the MSJ Order, the Court will again refer to “Company” throughout this Order to 1 under 35 U.S.C. § 284. Id. at 9 (“Prayer for Relief”). Viavi also requests an award of any other 2 supplemental damages, including attorneys’ fees and costs incurred, pursuant to 35 U.S.C. § 285. 3 Prayer for Relief ¶ 3. Viavi also alleges PTOT willfully infringed the Asserted Patents. 4 SAC ¶¶ 40, 48, 56. 5 On November 17, 2023, PTOT filed the present motion to dismiss, which has been fully 6 briefed. ECF Nos. 146 (“Mot”), 153 (“Opp.”), and 155 (“Reply”). The Court finds the Motion 7 appropriate for decision without oral argument pursuant to Civil Local Rule 7-1(b). Having 8 reviewed the parties’ submissions and relevant law, the Court GRANTS the motion with leave to 9 amend. 10 II. LEGAL STANDARD 11 A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) tests the legal 12 sufficiency of the claims alleged in the complaint. Ileto v. Glock, 349 F.3d 1191, 1199–1200 (9th 13 Cir. 2003). Under Federal Rule of Civil Procedure 8, a complaint must include a “short and plain 14 statement of the claim showing that the pleader is entitled to relief,” and may be dismissed under 15 Rule 12(b)(6) if the plaintiff fails to state a cognizable legal theory or has not alleged sufficient 16 facts to support such a theory. Somers v. Apple, Inc., 729 F.3d 953, 959 (9th Cir. 2013). When 17 deciding whether to grant a motion to dismiss, the court must generally accept as true all “well- 18 pleaded factual allegations.” Ashcroft v. Iqbal, 556 U.S. 662, 664 (2009). The court must also 19 construe the alleged facts in the light most favorable to the plaintiff. See Retail Prop. Trust v. 20 United Bd. of Carpenters & Joiners of Am., 768 F.3d 938, 945 (9th Cir. 2014) (“[The court] must 21 accept as true all factual allegations in the complaint and draw all reasonable inferences in favor of 22 the nonmoving party.”). However, “courts are not bound to accept as true a legal conclusion 23 couched as a factual allegation.” Iqbal, 556 U.S. at 678. 24 The court usually does not consider material beyond the pleadings for a Rule 12(b)(6) 25 motion. Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1555 n. 19 (9th Cir. 26 1989). Exceptions include material incorporated by reference in the complaint and material 27 subject to judicial notice. See Lee v. City of Los Angeles, 250 F.3d 668, 688–69 (9th Cir. 2001). 1 goes beyond the standard the Supreme Court articulated in Iqbal and Twombly.” Bot M8 LLC v. 2 Sony Corp. of Am., 4 F.4th 1342, 1352 (Fed. Cir. 2021). Rather, “[t]he adequacy of the facts pled 3 depends on the breadth and complexity of both the asserted patent and the accused product or 4 system and on the nature of the defendant’s business activities.” K-Tech Telecomms., Inc. v. Time 5 Warner Cable, Inc., 714 F.3d 1277, 1286 (Fed. Cir. 2013). For a “simple technology,” a plaintiff 6 may plausibly plead by providing the asserted patents, identifying the accused products “by name 7 and by attaching photos of the product packaging,” and alleging the accused products meet “each 8 and every element of at least one claim… either literally or equivalently.” Disc Disease Sols. Inc. 9 v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018). However, “a plaintiff cannot assert a 10 plausible claim for infringement under the Iqbal/Twombly standard by reciting the claim elements 11 and merely concluding that the accused product has those elements. There must be some factual 12 allegations that, when taken as true, articulate why it is plausible that the accused product infringes 13 the patent claim.” Bot M8 LLC, 4 F.4th 1342 at 1353 (agreeing with the district court’s dismissal 14 where the complaint’s allegations were conclusory, merely tracked the claim language, and did not 15 present plausible factual content in support of infringement). 16 Even when a complaint provides sufficient factual statements, a plaintiff may still fail to 17 plausibly state a claim where (1) the infringement allegation rests on an implausible claim 18 construction, Ottah v. Fiat Chrysler, 884 F.3d 1135, 1141-42 (Fed. Cir. 2018), or (2) “the factual 19 allegations are actually inconsistent with and contradict infringement.” Bot M8 LLC, 4 F.4th at 20 1354. 21 III. DISCUSSION 22 A. The SAC As Filed Compared to the Proposed SAC 23 At the outset, and before reaching the merits, PTOT argues that Viavi’s SAC should be 24 dismissed because Viavi “significantly changed and supplemented its direct infringement 25 allegations relative to those presented in its proposed SAC” submitted with Viavi’s motion for 26 leave to amend. Mot. 9. These changes, PTOT argues, violate Civil Local Rule 10-1, which 27 requires that “[a]ny party filing or moving to file an amended pleading must reproduce the entire 1 (citing Civ. L.R. 10-1). Viavi responds that the discrepancies between to the two versions of the 2 complaints are appropriate in light of the Court’s MSJ Order on indirect infringement, and 3 regardless, the substance of the as-filed SAC is the same as the proposed SAC. Opp. 5–6. 4 In granting Viavi’s motion for leave to amend its complaint, the Court granted “leave to 5 file the SAC” and stated that “Plaintiff may not add new claims or parties without leave of the 6 Court or stipulation by the parties pursuant to Federal Rule of Civil Procedure 15.” ECF No. 141 7 at 5. Recognizing the unusual procedural posture, the Court instructed that Viavi “may file the 8 SAC pursuant to the Court’s Order granting leave to file an amended complaint and incorporating 9 the Court’s ruling on this motion.” MSJ Order 2, n.3. 10 After reviewing the proposed SAC Viavi submitted with its motion for leave to amend 11 (ECF No. 86-6) and the SAC as filed (ECF No. 143-4), the Court observes that Viavi’s as-filed 12 SAC appears to include allegations beyond those necessary to comport with the Court’s MSJ 13 Order. For instance, the SAC contains substantive revisions to allegations related to its direct 14 infringement claims. Viavi’s direct infringement claims rely on its allegations that the Previously 15 Accused Filters represent the Accused Samples, but no such allegations appear in the proposed 16 SAC. Compare, e.g., SAC ¶¶ 36, 37, 44, 45 with ECF No. 86-6. 17 PTOT argues that the SAC should be dismissed “[f]or this reason alone.” Mot. 10. But 18 beyond stating that it “would have raised many of the arguments [in its motion to dismiss] in its 19 opposition to Viavi’s motion to amend,” PTOT does not state what arguments it would have raised 20 or otherwise how it is prejudiced. Nevertheless, because the Court finds that Viavi has failed to 21 plead direct infringement, the Court need not address this argument. 22 B. Direct Infringement 23 PTOT argues the SAC’s factual allegations are insufficient to plausibly state a claim for 24 direct infringement. In particular, PTOT argues that (1) Viavi lacks a good faith basis to allege 25 that the Accused Samples practice the elements of the asserted claims, including because Viavi 26 never analyzed nor saw one of the Accused Samples; (2) Viavi offers no factual support to tie the 27 Accused Samples to the charted, Previously Accused Filter; and (3) evidence cited in the SAC 1 PTOT first argues that Viavi cannot plausibly allege that the Accused Samples infringe the 2 asserted claims because Viavi has neither analyzed nor seen one of the Accused Samples. 3 Mot. 12. Viavi does not dispute that it neither analyzed nor viewed one of the Accused Samples 4 before filing the SAC. See generally Opp. Rather, Viavi argues that it could not have sought 5 additional technical information about the Accused Samples prior to filing the SAC because 6 “technical discovery on infringement issues was prohibited” and “PTOT strictly objected to 7 providing information it deemed outside of the Court’s ‘permissible scope of discovery.’” Id. at 8. 8 Viavi’s argument is unpersuasive because the record suggests that Viavi’s subpoena to Company 9 extended beyond what Viavi considers the “permissible scope of discovery.” See ECF 97-12 at 5. 10 Moreover, Viavi could have sought the Court’s permission to take additional, limited discovery 11 regarding the Accused Samples. 12 Even without additional technical evidence, Viavi argues that the allegations that the 13 Previously Accused Filter “represents” the Accused Samples and that the two products include the 14 same design and filter stack is sufficient. Opp. 9, 11. Although Viavi “is not required to plead 15 infringement on an element-by-element basis,” there must be “some factual allegations that, when 16 taken as true, articulate why it is plausible that the accused product infringes the patent claim.” 17 Bot M8 LLC, 4 F.4th at 1353 (internal quotations omitted). But even accepting all factual 18 allegations as true, the SAC’s showing here falls short. Viavi has not pleaded factual allegations 19 that articulate why it is plausible that the Accused Samples infringe the asserted claims. 20 First, other than alleging “on information and belief” that the Accused Samples have the 21 same design and filter stack as the Previously Accused Wafer, the SAC lacks any factual 22 allegations regarding its claims that PTOT infringed the Accused Samples. SAC ¶ 27. Moreover, 23 the deposition testimony Viavi cites for this proposition does not sufficiently support its allegation 24 that the two products are the same or can be treated the same under these circumstances. See id. 25 ¶ 23; ECF No. 143-9 (“Lin Dep.”). The testimony does not compare the Accused Samples with 26 the Previously Accused Filter, let alone discuss the specific Previously Accused Filter at all. 27 Lin Dep. 126:12-17 (discussing differences between wafers and filters generally). Indeed, other 1 and the Previously Accused Filter can be treated the same. Id. at 127:2-25 (expressing doubt 2 regarding whether the wafer and filters are the same). Without some factual basis beyond 3 conclusory statements regarding their size to plausibly connect the Accused Samples with the 4 Previously Accused Filter, Viavi has not sufficiently plead direct infringement of the Accused 5 Samples. 6 Second, the Court is not convinced that Viavi’s reliance on the claim chart involving the 7 Previously Accused Filter––not presently accused––is sufficient to plausibly allege the Accused 8 Sample infringes the Asserted Patents. In Power Density Sols., plaintiff attached to its complaint a 9 claim chart addressing “a single accused product” to support its infringement claims for multiple 10 accused products. Power Density Sols. v. IBM Corp., No. 19-CV-03710-RS, 2020 WL 4876895, 11 at *1 (N.D. Cal. Mar. 20, 2020). IBM argued that “to the extent [plaintiff] intend[ed] to pursue 12 infringement with respect to any product other than the [the product in the claim chart], it ha[d] 13 not alleged a sufficient factual basis for such claims.” Id. The Court dismissed all claims of 14 infringement with respect to all accused products other than the one addressed in the claim chart. 15 Id. at *1, 4 (explaining that “more than vague, generalized, and conclusory assertions are 16 required”); see also Golden v. Qualcomm, No. 2023-1818, 2023 WL 6561044, at *2 (Fed. Cir. 17 Oct. 10, 2023) (affirming dismissal and finding complaint failed to sufficiently plead a claim for 18 direct infringement where “the complaint did not adequately explain how [the accused] products 19 infringe the asserted patent claims” and where underlying complaint attached claim charts 20 referencing unaccused products) (emphasis in original); see also PlanetID, LLC v. Digify, Inc., 21 No. 19-cv-04615-JST, ECF No. 30 at 17 (N.D. Cal. Mar. 20, 2020) (dismissing infringement 22 claims where “the complaint and the attached charts lack[ed] factual allegations to raise the 23 reasonable inference that [defendant’s] products practice” the asserted patents). 24 Third, the SAC’s description in “narrative form” of “how the design of the [Accused 25 Samples] meets the asserted patent claim elements” do not help. Opp. 9. These paragraphs 26 simply recite the asserted claim elements and “merely conclude that the [Accused Samples] ha[ve] 27 those elements.” Bot M8 LLC, 4 F.4th at 1353. For example, paragraph 37 alleges that the 1 plurality of thin film hydrogenated silicon layers that have a refractive index greater than 3 over a 2 || wavelength range of 800 to 1100 nm, and a plurality of thin film lower refractive index layers that 3 || have a refractive index less than 3 over the wavelength range of 800 to 1100 nm.” SAC □ 37. 4 || This language mirrors claim 1 of the ’269 patent. See SAC ¥ 37, ’269 patent, claim 1. 5 || Paragraphs 45 and 53 likewise recite the asserted claims. See id. §] 45 (mirroring °526 patent, 6 || claim 27); § 53 (mirroring ’794, claim 9). 7q * 8 Even accepting Viavi’s allegations as true, the Court finds Viavi has not plausibly alleged 9 || that the Accused Samples infringe the Asserted Patents. Accordingly, the Court GRANTS 10 || PTOT’s motion to dismiss. Because the Court cannot say amendment would be futile, it will grant 11 Viavi leave to amend. 12 C. Willful Infringement 13 PTOT also moves to dismiss Viavi’s claims for willful infringement. Mot. 16. Because 14 || Viavi “has not sufficiently alleged direct infringement, the claim for willful infringement must 15 also be dismissed.” See Crandall Techs. v. Vudu, Inc., No. 20-cv-04849-VC, ECF No. 33, at a 16 || *2-3 (N.D. Cal. Nov. 2, 2020). 2 17 || IV. CONCLUSION Z 18 For the foregoing reasons, the Court GRANTS PTOT’s motion to dismiss with leave to 19 amend. Viavi must file any amended complaint within 21 days of this Order. 20 21 IT IS SO ORDERED. 22 || Dated: February 23, 2024 23 24 25 Edward J. Davila _ United States District Judge 26 27 28