646 F.Supp.3d 1180
N.D. Cal.2022Background
- Plaintiff UTTO is assignee of U.S. Patent No. 9,086,441, which claims a method (Claim 1) on a mobile device for locating buried-asset electromagnetic signals by receiving a group of buried asset data points, reading a buffer-width value, and generating a two-dimensional buffer zone based on that group (the buffer zone is the union/joinder of areas around multiple data points).
- Defendant Metrotech markets the RTK-Pro locator; UTTO alleges its “walk back” feature (promotional video) generates two-dimensional graphics (circles around walk-back points) that infringe the ’441 Patent.
- UTTO also alleges tortious interference: Honeywell was negotiating a near-final SaaS/license deal with UTTO; at a Dec. 21, 2021 meeting Metrotech allegedly told Honeywell it could withhold or charge for access to Metrotech-stored data, thereby disrupting UTTO’s deal.
- UTTO sued March 25, 2022; the court previously denied UTTO’s preliminary injunction and granted two prior motions to dismiss; this was UTTO’s fourth amended pleading (TAC).
- Metrotech moved to dismiss the TAC; the court granted the motion and dismissed both infringement and interference claims with prejudice for failure to plead plausible claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Patent infringement — whether the accused walk-back feature satisfies the Claim 1 "generating" limitation requiring generation of a buffer zone "based on the group of buried asset data points" | UTTO: even if RTK‑Pro generates a circle one walk‑back point at a time, doing so repeatedly is functionally equivalent to generating the buffer zone from a group of data points; alternatively, the ’441 Patent can operate on a single data point | Metrotech: the patent and its embodiments require combining multiple buried-asset data points (union/joinder of circles or buffer points) to produce the claimed buffer zone; RTK‑Pro shows single-point circles, not the joined buffer zone | Court: Dismissed — TAC fails to plausibly allege the buffer zone is generated from a group of data points or that single-point operation is functionally equivalent; patent specification requires plural data points; no direct or equivalents infringement pleaded. |
| Tortious interference with prospective economic advantage — whether UTTO pleaded an existing/probable economic relationship and an independently wrongful act by Metrotech | UTTO: had near-final negotiations with Honeywell; Metrotech’s statements that it could withhold or charge for data access were designed to disrupt the deal and were independently wrongful (Sherman Act, Cartwright Act, UCL, Stored Communications Act) | Metrotech: its comments were routine commercial statements (charging for services); no particular unlawful act alleged; UTTO’s statutory allegations are conclusory | Court: Dismissed — TAC plausibly alleges commercial negotiations but fails to plead an independently wrongful act or non-conclusory statutory violation; inferences UTTO relies on are unreasonable. |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading must state a plausible claim)
- Ashcroft v. Iqbal, 556 U.S. 662 (courts need not accept conclusory allegations)
- Usher v. City of Los Angeles, 828 F.2d 556 (9th Cir. 1987) (court draws reasonable inferences in plaintiff's favor at motion to dismiss)
- In re Gilead Scis. Sec. Litig., 536 F.3d 1049 (9th Cir. 2008) (conclusory allegations and unreasonable inferences are insufficient)
- Lopez v. Smith, 203 F.3d 1122 (9th Cir. 2000) (leave to amend usually granted unless futile)
- Moore v. Kayport Package Express, 885 F.2d 531 (9th Cir. 1989) (factors for denying leave to amend)
- AlterG, Inc. v. Boost Treadmills LLC, 388 F. Supp. 3d 1133 (N.D. Cal. 2019) (patent direct-infringement pleading requires alleging each claim element)
- Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342 (Fed. Cir. 2013) (doctrine of equivalents requires substantially same function, way, and result for each claim limitation)
- Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) (court may consider patent specification on a motion to dismiss)
- Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905 (Fed. Cir. 2017) (court need not accept allegations that contradict patent specification)
- Korea Supply Co. v. Lockheed Martin Corp., 29 Cal.4th 1134 (Cal. 2003) (elements of tortious interference and requirement of an independently wrongful act)
- Huawei Techs. Co. v. Samsung Elecs. Co., 340 F. Supp. 3d 934 (N.D. Cal. 2018) (claims may require specific step ordering; limitation-by-limitation analysis relevant to infringement)