United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON MOTION TO DISMISS
ALLISON D. BURROUGHS, U.S. DISTRICT JUDGE.
Ohio State Innovation Foundation (“OSIF”), which
holds intellectual property developed by or for The Ohio
State University, filed this action against Defendant Akamai
Technologies, Inc. (“Akamai”), alleging patent
infringement in violation of 35 U.S.C. § 271. [ECF No.
1, “Compl., ” ¶ 1]. According to OSIF,
Akamai has engaged in direct infringement, as well as
indirect infringement by actively inducing its users to
infringe on OSIF’s patent. [Compl. ¶¶
28–32.] Currently pending before the Court is
Akamai’s motion to dismiss the Complaint pursuant to
Federal Rule of Civil Procedure 12(b)(6). [ECF No. 23]. For
the reasons set forth below, Akamai’s motion to dismiss
[ECF No. 23] is DENIED.
following facts are drawn from the Complaint, the
well-pleaded allegations of which are taken as true for
purposes of evaluating Akamai’s motion to dismiss.
Ruivo v. Wells Fargo Bank, 766 F.3d 87, 90 (1st Cir.
was formed in 2012 to hold property developed by and for The
Ohio State University. [Compl. ¶ 2]. On December 27,
2016, OSIF was issued U.S. Patent No. 9, 531, 522 (“the
’522 Patent”), titled System and Method for
Proactive Resource Allocation. [Id.
¶¶ 1, 7]. Representative claim 1 of the ’522
Patent provides that a software monitors and collects
individual mobile user device history in order to create
individual profiles for users. [Id. ¶ 8]. The
program then automatically provides certain repeatedly
requested information. [Id.]. This automation allows
for content to be downloaded and delivered during off-peak
hours, when fewer mobile users would be attempting to utilize
necessarily limited bandwidth. [Id. ¶¶
Hesham El Gamal, Chair of The Ohio State University’s
Department of Computer and Electrical Engineering, is the
lead inventor on the ’522 Patent. [Id. ¶
11]. In order to commercialize the ’522 Patent, Dr. El
Gamal, along with other members of OSIF, created Inmobly,
Inc. (“Inmobly”), which has a license to the
’522 Patent and other related OSIF patents.
[Id. ¶ 12].
September 2013, Dr. El Gamal approached Akamai about the
possibility of Akamai purchasing a license to the ’522
Patent. [Id.]. Within a few weeks, on October 2,
2013, Inmobly and Akamai entered into a mutual non-disclosure
agreement. [Id. ¶ 14; ECF No. 1-3]. Dr. El
Gamal subsequently presented to Akamai, including its Vice
President of Engineering, James V. Luciani, regarding the
’522 Patent. [Compl. ¶ 15]. For several months
after Dr. El Gamal’s presentation, Akamai had access to
a demo version of the ’522 Patent software.
[Id. ¶ 16]. In fall 2014, Akamai informed Dr.
El Gamal that it was not interested in the software.
[Id. ¶ 19].
December 2014, Akamai filed an application on Managing
Mobile Device User Subscription and Service Preferences for
Predictively Pre-Fetch Content, Application Serial No.
14/584, 770, also known as the MAP SDK. [Id.
¶¶ 20, 22]. Mr. Luciani is listed as a lead
inventor. [Id. ¶ 20; ECF No. 1-5 at 2].
According to Akamai, the software covered by the application
has “the ability to push content to [a] device before
its requested.” [Compl. ¶ 22 (quoting
https://developer.akamai.com/legacy/tools/map)]. Those data
pushes would take place “during ‘off hours’
. . . in order to overcome times of high network congestion .
. . .” [Id.].
January 28, 2018, OSIF informed Akamai that it believed that
Akamai was infringing on claim 1 of the ’522 Patent and
that it therefore required a license under that patent.
[Id. ¶ 25]. After Akamai informed OSIF that it
would not be purchasing that license, OSIF filed the instant
complaint, [id. ¶ 26], claiming that Akamai
infringed on the ’522 Patent in violation of 35 U.S.C.
12, 2019, Akamai moved to dismiss the Complaint for failure
to state a claim under Federal Rule of Civil Procedure
12(b)(6). [ECF No. 23 at 1].
evaluate a Rule 12(b)(6) motion to dismiss for failure to
state a claim, the Court must accept as true all well-pleaded
facts, analyze those facts in the light most favorable to the
plaintiff’s theory, and draw all reasonable inferences
from those facts in favor of the plaintiff. See United
States ex rel. Hutcheson v. Blackstone Med., Inc., 647
F.3d 377, 383 (1st Cir. 2011). To avoid dismissal, a
complaint must set forth “factual allegations, either
direct or inferential, respecting each material element
necessary to sustain recovery under some actionable legal
theory.” Gagliardi v. Sullivan, 513 F.3d 301,
305 (1st Cir. 2008) (citation omitted). The facts alleged
must be sufficient to “state a claim to relief that is
plausible on its face.” A.G. ex rel. Maddox v.
Elsevier, Inc., 732 F.3d 77, 80 (1st Cir. 2013) (quoting
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007)). Though a lower threshold than probability, a
plausible claim must “allow the court to draw the
reasonable inference that the defendant is liable for the
misconduct alleged.” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009).
a claim of direct infringement under 35 U.S.C. § 271(a),
OSIF must plausibly claim that Akamai, “without
authority ma[de], use[d], offer[ed] to sell, ” or sold
the ’522 Patent. OSIF must additionally “allege
that defendant’s product practices all the elements of
at least one of the claims of the subject patent.”
Rampage, LLC v. Global Graphics SE, No. 16-cv-10691,
2017 WL 239328, at *3 (D. Mass. Jan. 19, 2017) (citation
omitted). Additionally, even if the alleged accused product
does not literally infringe a claim, “[t]he doctrine of
equivalents allows the patentee to claim those insubstantial
alterations that were not captured in drafting the original
patent claim but which could be created through trivial
changes.” Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 733 (2002). OSIF would then
need to demonstrate that “the accused product or
process contain[s] elements identical ...