ThroughPuter, Inc. v. Amazon Web Servs.
| Docket Number | 1:22-CV-1095-DAE |
| Decision Date | 24 July 2023 |
| Parties | THROUGHPUTER, INC., Plaintiff v. AMAZON WEB SERVICES, INC., Defendant |
| Court | U.S. District Court — Western District of Texas |
Before the Court is Defendant Amazon Web Services, Inc.'s Motion to Dismiss Under Rule 12(b)(6) for Failure to State a Claim Dkt. 20; and all related briefing. After reviewing these filings and the relevant case law, the undersigned recommends that the District Court deny Amazon's motion.
This is a patent case, in which Plaintiff ThroughPuter, Inc. asserts that Defendant Amazon Web Services, Inc., infringed its U.S. Patent Nos. 11,347,556 and 11,385,934, issued in 2021 (the Patents-in-Suit). Amazon moves to dismiss asserting that ThroughPuter has inadequately pleaded that it is the “inventor” of the patents in issue sufficient to state a claim.
Amazon argues that when ThroughPuter filed the Applications for the Patents-in-Suit, it copied verbatim claim language from published patent applications Amazon filed years before, U.S. Patent Nos. 10,282,330 and 10,223,317 (the Amazon Patents) and concealed its copying of Amazon's claims from the Patent Office.
Amazon alleges that ThroughPuter rewrote the titles, abstracts, and claims of ThroughPuter's earlier patent applications, and then falsely represented to the Patent Office that its amendments added no new subject matter. Amazon argues that because ThroughPuter did not “invent” what its patents claim, the claims of the Patents-in-Suit are invalid under Section 101 of the Patent Act, which limits the issuance of patents only to “whoever invents.” Therefore, Amazon alleges, ThroughPuter's claims should be dismissed pursuant to Rule 12(b)(6).
ThroughPuter relies on its patent applications from 2013 and 2014, arguing that its Patents-in-Suit claim a priority date that is three years earlier than the earliest priority date of the Amazon Patents. ThroughPuter argues that because it disclosed its claimed inventions years before the applications that resulted in the Amazon Patents were filed, ThroughPuter's Patents-in-Suit qualify as prior art to the Amazon Patents.
Additionally, ThroughPuter argues that it followed well-established, typical, and accepted practices in obtaining the Patents-in-Suit, through using continuation[1] applications. And, ThroughPuter alleges, the only regulation Amazon accuses ThroughPuter of violating does not cover the Patents-in-Suit and would not have applied to ThroughPuter's prosecution even if it did.
Moreover, ThroughPuter maintains, Amazon's argument is really one that the Patents-in-Suit lack written description support under 35 U.S.C. § 112(a), which is a question of fact, unresolvable on a motion to dismiss. ThroughPuter argues that Amazon attempts to recast its written description argument as a lack of inventorship argument under 35 U.S.C. § 101, unsupported by any case citations utilizing inventorship as a basis for dismissal.
Pursuant to Rule 12(b)(6), a court may dismiss a complaint for “failure to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). In deciding a 12(b)(6) motion, a “court accepts ‘all well-pleaded facts as true, viewing them in the light most favorable to the plaintiff.'” In re Katrina Canal Breaches Litig., 495 F.3d 191, 205 (5th Cir. 2007) ). “To survive a Rule 12(b)(6) motion to dismiss, a complaint ‘does not need detailed factual allegations,' but must provide the plaintiff's grounds for entitlement to relief-including factual allegations that when assumed to be true ‘raise a right to relief above the speculative level.'” Cuvillier v. Taylor, 503 F.3d 397, 401 (5th Cir. 2007) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). That is, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570).
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.” Id. Id. A court ruling on a 12(b)(6) motion may rely on the complaint, its proper attachments, “documents incorporated into the complaint by reference, and matters of which a court may take judicial notice.” Dorsey v. Portfolio Equities, Inc., 540 F.3d 333, 338 (5th Cir. 2008) (citations and internal quotation marks omitted). A court may also consider documents that a defendant attaches to a motion to dismiss “if they are referred to in the plaintiff's complaint and are central to her claim.” Causey v. Sewell Cadillac-Chevrolet, Inc., 394 F.3d 285, 288 (5th Cir. 2004). But because the court reviews only the well-pleaded facts in the complaint, it may not consider new factual allegations made outside the complaint. Dorsey, 540 F.3d at 338. “[A] motion to dismiss under 12(b)(6) ‘is viewed with disfavor and is rarely granted.'” Turner v. Pleasant, 663 F.3d 770, 775 (5th Cir. 2011) (quoting Harrington v. State Farm Fire & Cas. Co., 563 F.3d 141, 147 (5th Cir. 2009)).
The parties do not dispute the following summary of the underlying facts. In 2016, Amazon filed two U.S. patent applications: No. 15/279,232, filed on September 28, 2016, and No. 15/280,624, filed on September 29, 2016. Dkt. 20-1; Dkt. 20-4, U.S. Pat. No. 10,223,317; Dkt. 20-5, U.S. Pat. No. 10,282,330. The '232 and '624 applications were published, and thus became publicly available, in March 2018, and issued in March and May 2019 as U.S. Pat. Nos. 10,223,317 and 10,282,330. Id. The Amazon Patents are titled “Configurable Logic Platform” and “Configurable Logic Platform with Multiple Reconfigurable Regions”. Id.
The two ThroughPuter Patents-in-Suit are related and identify on their face a series of five parent applications, the earliest of which was filed in 2014. Dkt. 20-12, at 1-2; Dkt. 20-13, at 1-2. All five parent applications share the same specification and bear an identical title, “Concurrent Program Execution Optimization.” Dkt. 206, at 9-37; Dkt. 20-7, at 3-31; Dkt. 20-8, at 8-37; Dkt. 20-9, at 32-61; Dkt. 20-10, at 130.
In August and September of 2021, ThroughPuter filed two new patent applications in the parallel processing family, which issued as the Patents-In-Suit. Dkt. 20-12, at 1; Dkt. 20-13, at 1; Dkt. 1-1; Dkt. 1-2. As filed, the new applications included the same specification as the prior parallel processing patent applications, but now had a different title: instead of “Concurrent Program Execution Optimization,” the title became “Configurable Logic Platform with Reconfigurable Processing Circuitry.” Dkt. 1-1; Dkt. 1-2; Dkt. 20-14, at 54 (showing title of “Concurrent Program Execution Optimization”), 45 (showing new title of “Configurable Logic Platform with Reconfigurable Processing Circuitry”); Dkt. 20-15, at 19, 10. ThroughPuter then filed an amendment and changed the abstracts and claims of the parent specification in what Amazon alleges was an effort to copy and appropriate the inventions in Amazon's '330 and '317 patents.
In June 2014 ThroughPuter filed U.S. Application No. 14/318,512. Dkt. 25, at 7. This application issued as U.S. Patent No. 9,448,847 on September 20, 2016. Id. The 2021 Patents-in-Suit claim priority to two provisional applications, the first of which ThroughPuter filed two provisional patent applications in August 2013. Id. The Patents-in-Suit also claim priority to a non-provisional application filed June 2014. Id. ThroughPuter asserts that the non-provisional application includes the same specification as the Patents-in-Suit. ThroughPuter relies on its 2013 and 2014 filings, asserting it was the first to invent, and, accordingly, ThroughPuter's patents are prior art to the Amazon Patents, conceived of, and constructively reduced to practice, four years before the Amazon Patents published. Id.
Amazon replies that ThroughPuter's 2021 application differs from its 2021 application in that is substantially changed the titles, abstracts, and claims, to what it argues is an entirely different invention. Dkt. 28 at 6. Thus, it argues, ThroughPuter is not the “inventor” of the patented technology, the patents are ineligible for patenting and invalid pursuant to § 101 and its infringement claims should be dismissed. Id.
Amazon asserts that its patents are directed to resolving security issues associated with the use of Field Programmable Gate Arrays. Dkt. 20-4, at Abstract, 1:61-2:20; Dkt. 20-5, at Abstract, 1:65-2:34. FPGAs are integrated circuits that can be programmed after deployment to perform different functions. Dkt. 20-4, at 1:612:8. Programming an FPGA configures the physical structures of the chip, called configurable logic blocks, to perform a desired function. Id. at 2:24-28; Dkt. 20-5, at 3:51-62. FPGAs can perform their programmed functions much faster than software running on a general-purpose processor that cannot be reconfigured for each desired function. Id. at 2:21-40. Accordingly, FPGAs can be used as hardware accelerators to speed up functions that would otherwise be performed by software. Id.
The Amazon patents address security issues that arise when FPGAs are...
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