Technology Patents, LLC v. Deutsche Telekom Ag

• Decision Date: 29 August 2008
• Docket Number: Civil Action No. AW-07-3012.
• Citation: 573 F.Supp.2d 903
• Parties: TECHNOLOGY PATENTS, LLC, Plaintiff, v. DEUTSCHE TELEKOM AG, et al., Defendants.
• Court: U.S. District Court — District of Maryland

573 F.Supp.2d 903

TECHNOLOGY PATENTS, LLC, Plaintiff, v. DEUTSCHE TELEKOM AG, et al., Defendants.

Civil Action No. AW-07-3012.

United States District Court, D. Maryland, Southern Division.

August 29, 2008.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Douglas W. Baruch, Elliott E. Polebaum, Fried Frank Harris Shriver and Jacobson LLP, Luna Miriam Samman, Dickstein Shapiro LLP, George F. Pappas, Peter A. Swanson, Richard Rainey, Covington and Burling LLP, Frank J. Eisenhart, Dechert LLP, Brian Matthew Koide, Nathaniel Grow, Richard McMillan, Jr., Crowell and Moring LLP, Carl S. Nadler, Heller Ehrman LLP, Jin Suk Park, Akin Gump Strauss Hauer and Feld LLP, Brian T. Racilla, Linda Liu Kordziel, Michael J. McKeon, Fish and Richardson PC, Michael David Billok, Gibson Dunn and Crutcher LLP, Franklin M. Rubinstein, Wilson Sonsini Goodrich and Rosati, Laura P. Masurovsky, Finnegan Henderson Farabow Garrett and Dunner LLP, Washington, DC, James W. Dabney, Henry Lebowitz, Ron Lazebnik, Fried Frank Harris Shriver and Jacobson LLP, Michael 0. Cummings, Covington and Burling LLP, John L. Labarre, Josh Knevitt, Gibson Dunn and Crutcher LLP, New York, NY, Bruce L. Marcus, Joseph Anthony Compofelice, Jr., Marcus Bonsib LLC, Greenbelt, MD, Bryant C. Boren, Jr., Christopher W. Kennerly, Kevin E. Cadwell, Steven Schortgen, Baker Botts LLP, Dallas, TX, Gregory D. Grant, Shulman Rogers Gandal Pordy and Ecker PA, Rockville, MD, Jonathan D. Baker, Nathaniel William Peters, Dechert LLP, Mountain View, CA, Michael M. Markman, Robert J. Williams, Heller Ehrman LLP, San Francisco, CA, Stephen R. Mick, Akin Gump Strauss Hauer and Feld, Los Angeles, CA, Steven M. Zager, Akin Gump Strauss Haer and Feld LLP, Houston, TX, Michael Anthony Ladra, Robin L. Brewer, Stefani Elise Shanberg, Wilson Sonsini Goodrich and Rosati PC, Palo Alto, CA, for Defendants.

MEMORANDUM OPINION

ALEXANDER WILLIAMS, JR., District Judge.

Plaintiff Technology Patents, LLC, ("Plaintiff') has filed this action against 131 U.S. and international telecommunications companies, alleging patent infringement under Title 35 of the U.S.Code.¹ Currently pending and ready for resolution in this patent infringement case are numerous Defendants' Motions to Dismiss, pursuant to Fed.R.Civ.P. 12(b)(2) and 12(b)(6). Nearly every Defendant in this case has filed a motion to dismiss under Rule 12(b)(2) or 12(b)(6) or both.² The issues have been fully briefed, and the filings thus far have been quite extensive. The Court has reviewed the entire record, as well as the Pleadings and Exhibits, with respect, to the instant motions. On August 15, 2008, the Court gathered as many of the foreign Defendants and conducted a hearing on the Motions to Dismiss under Rule 12(b)(2) for lack of personal jurisdiction.³ See Local Rule 105.6 (D.Md.2008). For the reasons stated more fully below the Court will GRANT the foreign Defendants' Motions to Dismiss under Fed. R.Civ.P. 12(b)(2), and GRANT-IN-PART and DENY-IN-PART Defendants' Motions to Dismiss under Fed.R.Civ.P. 12(b)(6).

FACTUAL AND PROCEDURAL HISTORY

Plaintiff Technology Patents, LLC brought suit against 131 Defendants representing nearly thirty-five countries claiming infringement of two patents, United States Reissued Patent No. RE39,870 (the "'870 patent") and United States Patent No. 6,646,542 (the "'542 patent"), collectively the "patents-in-suit." The defendants are domestic and international wireless telecommunications service providers, wireless device manufacturers, and wireless technology software producers. The patents-in-suit relate to a global paging system for sending international text messages. (See Docket No. 1, Ex. 1, '870 Patent, at col.1, ll.15-19—"this invention relates to a global paging system utilizing a land-based packet-switching digital data network (e.g. the Internet) and a feature for permitting subscribers to remotely designate countries in which they are, or expect to be, located."); see also Docket No. 1, Ex. 2, '542 Patent, at col.1, ll.5-10 (same). More specifically, the patents-insuit protect systems and methods for international paging in which an originating user sends a paging signal to a website or a server of a paging system. The user then designates a country in which the receiving user is to be paged, after which the first website or server transmits the message over the Internet to a second website or server located in the designated country. The second server causes a wireless transmitter located in the designated country to attempt to page the wireless device of the receiving user. Under some embodiments of the patents, if the receiving user is not in the designated country, the server will continue to attempt to page the receiving user according to a designated list of alternative countries. The goal of the paging methods and systems is "to transmit paging data around the world so that subscribers to the system or receiving users may be paged in different countries around the world, regardless of whether the caller or originating user knows the exact whereabouts of the receiving user." ('870 Patent, col.3, ll.42-48).

According to the foreign Defendants, there are two methods of sending international text messages: the U.S. phone number scenario and the "roaming" scenario. Under the U.S. phone number scenario, a message is sent from the foreign country to a person in the U.S. with a U.S. phone number. To accomplish this exchange, the foreign Defendants "hand-off" the message to an international "gateway" service, i.e. Sybase 365, Syniverse, etc. The "gateway" then sends the message to a U.S. telecom, which then sends the message to the recipient in the U.S. The foreign Defendants all maintain that they have no insight or control over the "gateway" system or even knowledge that the messages are actually received by the intended recipient because the routing path for the messages is under the control of the international gateway provider.

Under the "roaming" scenario, an international subscriber may be "roaming" in the U.S. but still desires to send and receive text messages. To accomplish this exchange, the foreign Defendants "handoff" messages intended for the roaming international subscriber to the international CCSS7⁴ network, which is then routed to a mobile switching center ("MSC"), owned by a U.S. telecom. The foreign Defendants emphasize that they do not own the CCSS7 network and have no control over the routing of messages to the designated MSC. When the MSC receives a message intended for the roaming subscriber, the MSC transmits that message to the subscriber.

Plaintiff has brought suit alleging that all the Defendants are liable for infringing the patents-in-suit, in violation of 35 U.S.C. § 271.⁵ (See Docket No. 1). Plaintiff alleges that Defendants have infringed the patents with (1) their websites for sending and/or receiving international text or SMS messages, (2) live computer-based messenger programs, such as Windows Live Messenger and Yahoo! Messenger, adapted to send and/or receive international text or SMS messages,⁶ (3) handheld mobile devices adapted and sold to use any of the messaging websites or messaging programs, and (4) systems, methods, and/or services for international messaging provided by the Defendants who are wireless carriers. (Id. ¶¶ 149, 163). Numerous Defendants have moved to dismiss Plaintiffs complaint on the basis of lack of personal jurisdiction and failure to state a claim because the extraterritorial nature of the patent claims precludes a finding of infringement under U.S. patent laws.

STANDARD OF REVIEW

Under Fed.R.Civ.P. 12(b)(2), the party asserting personal jurisdiction has the burden to prove the existence of a ground for jurisdiction by a preponderance of the evidence. Mylan Laboratories, Inc. v. Akzo, N.V., 2 F.3d 56, 60 (4th Cir.1993). When a court addresses the question of jurisdiction based only on the pleadings, the allegations in the complaint, the motion papers, and any supporting legal memoranda, without an evidentiary hearing, the burden is on the plaintiff to make a prima facie showing of a sufficient basis for jurisdiction. Id.; see also New Wellington Fin. Corp. v. Flagship Resort Dev. Corp., 416 F.3d 290, 294 (4th Cir.2005). In determining whether the plaintiff has proven a prima facie case of personal jurisdiction, the court "must draw all reasonable inferences arising from the proof, and resolve all factual disputes, in the plaintiffs favor." Mylan, 2 F.3d at 60; see also Dring v. Sullivan, 423 F.Supp.2d 540, 543 (D.Md. 2006). Since this Court has not conducted any evidentiary hearing, Plaintiff has the burden to only establish a prima facie case for jurisdiction.

The purpose of a motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6) is to test the sufficiency of the plaintiffs complaint. See Edwards v. City of Goldsboro, 178 F.3d 231, 243 (4th Cir.1999). Except in certain specified cases, a plaintiffs complaint need only satisfy the "simplified pleading standard" of Rule 8(a), Swierkiewicz v. Sorema N.A., 534 U.S. 506, 513, 122 S.Ct. 992, 152 L.Ed.2d 1 (2002), which requires a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a)(2). Nevertheless, "Rule 8(a)(2) still requires a `showing,' rather than a blanket assertion, of entitlement to relief." Bell Atlantic Corp. v. Twombly, ___ U.S. ___, 127 S.Ct. 1955, 1965 n. 3, 167 L.Ed.2d 929 (2007). That showing must consist of at least "enough facts to state a claim to relief that is plausible on its face." Id. at 1974. In its determination, the court must consider all well-pled allegations in a complaint as true, Albright v. Oliver, 510 U.S. 266, 268, 114 S.Ct. 807, 127 L.Ed.2d 114 (1994), and must construe all factual allegations in the light most favorable to the plaintiff. See Harrison v. Westinghouse Savannah River Co., 176 F.3d 776, 783 (4th Cir.1999) (citing Mylan Labs., Inc. v. Matkari, 7 F.3d 1130, 1134 (4th...