1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 VIRTAMOVE, CORP., Case No. 25-cv-00860-NW

8 Plaintiff,

ORDER DENYING IN PART AND

9 v. GRANTING IN PART MOTION TO

DISMISS

10 GOOGLE LLC, Re: ECF No. 110 Defendant. 11

12 13 Plaintiff VirtaMove Corp. sued Defendant Google LLC for patent infringement. On July 14 15, 2025, Google filed a motion to dismiss Virtamove’s complaint. ECF No. 110.1 Having 15 considered the parties’ briefs and the relevant legal authority, the Court concludes oral argument is 16 not required, see N.D. Cal. Civ. L.R. 7-1(b), VACATES the December 3, 2025 hearing, and 17 DENIES the motion in part and GRANTS the motion in part with leave to amend. 18 I. BACKGROUND 19 A. Factual Background and Procedural History2 20 Plaintiff VirtaMove is a Canadian company, formerly known as Appzero Software Corp., 21 and established in 2010. VirtaMove focuses on containerization, or portable computing 22 environments. 23 In 2015, 2020, and 2021, VirtaMove met with Defendant Google to negotiate a 24 partnership. VirtaMove demonstrated its V-Migrate/AppZero software and shared materials with 25

26 1 Record citations are to material in the Electronic Case File (“ECF”); pinpoint citations are to the ECF-generated page numbers at the top of documents. 27 1 Google about how the software worked. Negotiations eventually broke down. 2 On January 31, 2024, VirtaMove sued Google in the United States District Court for the 3 Western District of Texas for infringement of two patents: U.S. Patent Nos. 7,519,814 (the “’814 4 patent”) and 7,784,058 (the “’058 patent”). On July 10, 2024, Google moved to transfer the case 5 to the Northern District of California, and the Court granted Google’s motion on January 22, 2025. 6 ECF No. 49, 86.3 7 In June of 2024, while the case was still in the Western District of Texas, Google filed a 8 motion to dismiss VirtaMove’s first amended complaint. ECF No. 36. VirtaMove filed a second 9 amended complaint on December 5, 2025. ECF No. 68. The parties stipulated that Google’s first 10 motion to dismiss would apply to the second amended complaint and could be decided as briefed. 11 ECF No. 73. Alternatively, the parties stated, “[i]f the Court prefers to proceed differently, the 12 parties will defer to the Court’s preference.” Id. From the docket, it does not appear the Texas 13 Court entered the parties’ stipulation. 14 On July 1, 2025, the undersigned judge mooted Google’s motion to dismiss VirtaMove’s 15 first amended complaint considering that VirtaMove had since filed a second amended complaint. 16 ECF No. 108. On July 15, 2025, rather than filing an updated motion to dismiss VirtaMove’s 17 second amended complaint, Google refiled its motion to dismiss the first amended complaint 18 asserting that the parties’ stipulation remained operative. ECF No. 110. VirtaMove filed an 19 opposition on July 29, 2025, see ECF No. 111, and Google filed a reply seven days later, see ECF 20 No. 113. 21 While Google’s motion to dismiss was pending, VirtaMove filed a notice of voluntary 22 dismissal without prejudice of the ’058 patent, mooting the portions of Google’s motion relating to 23 that patent. ECF No. 123. In light of VirtaMove’s voluntary dismissal the Court DISCHARGES 24 its November 25, 2025 order requiring the parties to meet and confer and file supplemental 25 briefing as to the status of the ’058 patent. ECF No. 122. 26

27 3 Due to issues with the transfer, the case did not begin in the Northern District of California until 1 B. U.S. Patent No. 7,519,814 2 The *814 Patent “relates to management and deployment of server applications.” °814 3 || patent at 1:15-16. In traditional computer systems, the operating system controls access to shared 4 || resources required by various software applications, see id. at 1:20—24, but that creates drawbacks 5 || that can prevent different applications from being installed on the same system. Most notably, 6 || “certain applications require a specific version of operating system facilities and as such will not 7 || co-exist with applications that require another version.” /d. at 1:37-40. At the time of the 8 application, there were ways to address this. For example, so-called virtual machine technology 9 || allowed multiple operating systems “to effectively co-exist on a single compute platform.” /d. at 10 1:54-56. That approach, however, “imposes significant performance overhead” and “does nothing 11 to alleviate the requirement that an operating system must be licensed, managed and maintained 12 || for each application.” /d. at 1:62-65. The patent purports to address this problem by teaching a 13 system that “only requires one operating system regardless of the number of application containers 14 || deployed.” /d. at 1:60-61. Further, applications can “more effectively share a common 15 comput[ing] platform, and also applications to be easily moved between platforms, without the 16 || requirement for a separate and distinct operating system for each application.” /d. at 1:65—2:3.

Zz 18 21b 21d □□□

Files Files Files 22 23 20a 20b 20c 24

27 Figure 2 28

1 Figure 2 (above) shows an embodiment with multiple applications (21a–21f). Each 2 application is within one of three secure “containers” (20a–20c), which the server creates by 3 aggregating “all files required to successfully execute a set of software applications on a 4 computing platform.” ’814 patent at 7:25–27. Because each application is segregated and 5 executes its own copy of files, each application can use different versions of system files if 6 necessary. Id. at 7:8–10. 7 Claim 1 recites: 8 1. In a system having a plurality of servers with operating systems that differ, operating in disparate computing environments, wherein 9 each server includes a processor and an operating system including a kernel a set of associated local system files compatible with the 10 processor, a method of providing at least some of the servers in the system with secure, executable, applications related to a service, 11 wherein the applications are executed in a secure environment, wherein the applications each include an object executable by at least 12 some of the different operating systems for performing a task related to the service, the method comprising: 13 storing in memory accessible to at least some of the servers a plurality 14 of secure containers of application software, each container comprising one or more of the executable applications and a set of 15 associated system files required to execute the one or more applications, for use with a local kernel residing permanently on one 16 of the servers; 17 wherein the set of associated system files are compatible with a local kernel of at least some of the plurality of different operating systems, 18 the containers of application software excluding a kernel, 19 wherein some or all of the associated system files within a container stored in memory are utilized in place of the associated local system 20 files that remain resident on the server, 21 wherein said associated system files utilized in place of the associated local system files are copies or modified copies of the associated local 22 system files that remain resident on the server, and 23 wherein the application software cannot be shared between the plurality of secure containers of application software, and 24 wherein each of the containers has a unique root file system that is 25 different from an operating system's root file system. 26 Id. at cl. 1. Because the complaint only asserts infringement of claim 1, Google treats claim 1 as 27 representative. 1 II. LEGAL STANDARD 2 A. Motion to Dismiss 3 To survive a motion to dismiss, a plaintiff must plead “enough facts to state a claim to 4 relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). The 5 Court must “accept all factual allegations in the complaint as true and construe the pleadings in the 6 light most favorable to the [plaintiff].” Knievel v. ESPN, 393 F.3d 1068, 1072 (9th Cir. 2005). 7 However, “the tenet that a court must accept a complaint’s allegations as true is inapplicable to 8 threadbare recitals of a cause of action’s elements, supported by mere conclusory statements.” 9 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). 10 If the Court dismisses the complaint, it must then decide whether to grant leave to amend. 11 The Ninth Circuit has “repeatedly held that a district court should grant leave to amend even if no 12 request to amend the pleading was made, unless it determines that the pleading could not possibly 13 be cured by the allegation of other facts.” Lopez v. Smith, 203 F.3d 1122, 1130 (9th Cir. 2000) 14 (citations and internal quotation marks omitted). 15 B. Section 101 Patent Eligibility 16 Patent eligibility “is a question of law, based on underlying facts” that “may be, and 17 frequently has been, resolved on a Rule 12(b)(6) . . . motion.” SAP Am., Inc. v. InvestPic, LLC, 18 898 F.3d 1161, 1166 (Fed. Cir. 2018). Dismissal is appropriate “where the undisputed facts, 19 considered under the standards required by [Rule 12(b)(6)], require a holding of ineligibility under 20 the substantive standards of law.” Id. 21 Section 101 “defines the subject matter that may be patented.” Bilski v. Kappos, 561 U.S. 22 593, 601 (2010). Under Section 101, patentable subject matter includes “any new and useful 23 process, machine, manufacture, or composition of matter, or any new and useful improvement 24 thereof.” 35 U.S.C. § 101. “These categories are broad, but they are not limitless.” Twilio, Inc. v. 25 Telesign Corp., 249 F. Supp. 3d 1123, 1136 (N.D. Cal. 2017). “Laws of nature, natural 26 phenomena, and abstract ideas are not patentable,” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 27 208, 216 (2014), because “they are the basic tools of scientific and technological work,” which are 1 Lab’ys, Inc., 566 U.S. 66, 70 (2012) (cleaned up). Allowing patent claims for such purported 2 inventions “might tend to impede innovation more than it would tend to promote it.” Id. 3 But courts must “tread carefully in construing this exclusionary principle lest it swallow all 4 of patent law.” Alice Corp. Pty., 573 U.S. at 217. “At some level, all inventions embody, use, 5 reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id. (cleaned up). 6 So, “in applying the § 101 exception, [the Court] must distinguish between patents that claim the 7 ‘building blocks’ of human ingenuity and those that integrate the building blocks into something 8 more, thereby ‘transforming’ them into a patent-eligible invention.” Id. (cleaned up). 9 To draw this distinction, the Court engages in a two-step “Alice” analysis. First, the Court 10 “determine[s] whether the claims at issue are directed to a patent-ineligible concept.” Id. at 218. 11 If so, the Court then assesses “whether the elements of each claim, both individually and as an 12 ordered combination[,] . . . transform the nature of the claim into a patent eligible application.” Id. 13 at 217 (cleaned up). This second step of the analysis is “a search for an inventive concept—i.e., an 14 element or combination of elements that is sufficient to ensure that the patent in practice amounts 15 to significantly more than a patent upon the ineligible concept itself.” Id. at 217-18 (cleaned up). 16 Where the claims at issue are not directed to an abstract idea, a court need not reach the second 17 step of the Alice analysis. See Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 18 1363 (Fed. Cir. 2018) (“Because we hold that the asserted claims are not directed to an abstract 19 idea, we do not proceed to the second step of the inquiry.”). 20 III. DISCUSSION 21 Google moves to dismiss VirtaMove’s complaint for failing to state a claim on several 22 grounds: (1) that the ’814 patent is ineligible under Section 101, (2) the allegations of direct 23 infringement do not plausibly state a claim, (3) the complaint lacks sufficient allegations to state a 24 claim for indirect infringement, and (4) VirtaMove fails to adequately plead knowledge for pre- 25 suit indirect infringement and compliance with the marking statute. 26 A. Patent Eligible Subject Matter Under Section 101 27 To begin, step one of the two-step Alice patent eligibility inquiry asks whether the claim is 1 to be the focus of the claimed advance over the prior art.” TecSec, Inc. v. Adobe Inc., 978 F.3d 2 1278, 1292 (Fed. Cir. 2020). Thus, the Court begins step one of the Alice analysis with the 3 “directed to” inquiry, by asking what the ’814 patent asserts to be the focus of the claimed 4 advance. See Yu v. Apple Inc., 1 F.4th 1040, 1043 (Fed. Cir. 2021) (“We have approached the 5 Step 1 directed to inquiry by asking what the patent asserts to be the focus of the claimed advance 6 over the prior art. In conducting that inquiry, we must focus on the language of the asserted claims 7 themselves, considered in light of the specification.” (cleaned up).) 8 At Alice step one, the court evaluates “the focus of the claimed advance over the prior art 9 to determine if the character of the claim as a whole, considered in light of the specification, is 10 directed to [an abstract idea].” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092 (Fed. 11 Cir. 2019) (citation modified). Finding a claim’s “focus” requires a delicate balancing act. While 12 the process necessarily requires some high-level description, the Court must articulate “what the 13 claims are directed to” with “enough specificity to ensure the step one inquiry is meaningful.” 14 Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017); see also Enfish, LLC 15 v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) (“[D]escribing the claims at such a high 16 level of abstraction and untethered from the language of the claims all but ensures that the 17 exceptions to § 101 swallow the rule.”). 18 The ’814 patent “relates to computer software,” particularly the “management and 19 deployment of server applications.” ’814 pat. at 1:14-16. The claimed invention purports to 20 provide “a solution whereby a plurality of services can conveniently be installed on one or more 21 servers in a cost effective and secure manner.” Id. at 2:13–15; see also ECF No. 68 ¶ 15. For 22 instance, the specification describes: 23 The key difference between the Virtual Machine approach and the approach described herein is that in the former an operating system, 24 including files and a kernel, must be deployed for each application while the latter only requires one operating system regardless of the 25 number of application containers deployed. The Virtual Machine approach imposes significant performance overhead. Moreover, it 26 does nothing to alleviate the requirement that an operating system must be licensed, managed and maintained for each application. The 27 invention described herein offers the ability for applications to more requirement for a separate and distinct operating system for each 1 application.

2 3 ’814 pat. at 1:56-2:3. 4 Google argues that “[t]he ’814 Patent is directed to the abstract idea of using containers 5 with copies of system files for applications, so that those applications can be used in different 6 operating environments.” ECF No. 110-1 at 23.4 In support, Google asserts that claim 1 “recites a 7 computer system with generic computer elements such as containers, servers, operating systems, 8 computing environments, a processor, a kernel, local system files, applications, objects, and a root 9 file system.” Id. at 23-24. 10 VirtaMove argues that Google’s analysis fails to consider the claims as a whole and 11 account for the ’814 patent’s claimed advance. ECF No. 111 at 11. VirtaMove asserts that the 12 claimed advance is: storing … secure containers of application software, each container 13 comprising one or more of the executable applications and a set of associated system files required to execute the one or more 14 applications … wherein said associated system files utilized in place of the associated local system files are copies or modified copies of 15 the associated local system files that remain resident on the server, and wherein the application software cannot be shared between the 16 plurality of secure containers of application software, and wherein each of the containers has a unique root file system that is different 17 from an operating system’s root file system. 18 Id. at 12 (citing ’814 pat. at 17:41-61). 19 The Court agrees with VirtaMove that the focus must be on the claim language. Trinity 20 Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1363 (Fed. Cir. 2023). The Court finds claim 1 21 is directed to a method within a system having a plurality of servers with different operating 22 systems, where the method provides the servers in the system with secure, executable, applications 23 related to a service. Additionally, the method of claim 1 requires storing in memory accessible to 24 at least some of the servers a plurality of secure containers of application software, with each 25 container comprising one or more of the executable applications and a set of associated system 26 4 The Court notes that the ECF-generated page numbers, typically visible at the top of filed 27 documents, are not visible on ECF No. 110-1. Therefore, citations for ECF No. 110-1 are to the 1 files required to execute the one or more applications, for use with a local kernel residing 2 permanently on one of the servers. 3 Next, the Court determines whether this focus is an abstract idea. “Neither the U.S. 4 Supreme Court nor the Federal Circuit has set forth a bright line test separating abstract ideas from 5 concepts that are sufficiently concrete so as to require no further inquiry under the first step of the 6 Alice framework.” Twilio, Inc., 249 F. Supp. 3d at 1138 (citing Alice Corp. Pty., 573 U.S. at 221). 7 That a claim is directed to “mental processes that can be performed in the human mind or using a 8 pencil and paper” is a sign of abstraction. PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 9 1316 (Fed. Cir. 2021) (cleaned up). Likewise, “[a] claimed method’s similarity to fundamental . . 10 . practices long prevalent is yet another clue that the claims may be abstract and unpatentable.” 11 Beteiro, LLC v. DraftKings Inc., 104 F.4th 1350, 1356 (Fed. Cir. 2024) (cleaned up). To 12 determine whether a claim’s focus is an abstract idea, courts also “compare claims at issue to those 13 claims already found to be directed to an abstract idea in previous cases.” Enfish, LLC, 822 F.3d 14 at 1334. 15 Claim 1 of the ’814 patent is not directed to an abstract idea. Rather, the claimed solution 16 of the ’814 patent “is necessarily rooted in computer technology in order to overcome a problem 17 specifically arising in the realm of computer networks.” DDR Holdings, LLC v. Hotels.com, L.P., 18 773 F.3d 1245, 1257 (Fed. Cir. 2014). 19 Here, claim 1 is not simply directed to any method of using containers with copies of 20 system files for applications, so that those applications can be used in different operating 21 environments, but instead to a specific method that requires storing in memory (accessible to at 22 least some of the servers) a plurality of secure containers of application software, with each 23 container comprising one or more of the executable applications and a set of associated system 24 files required to execute the one or more applications, for use with a local kernel residing 25 permanently on one of the servers. Id. For example, claim 1 recites a method that stores in 26 memory “secure containers of application software” that each contain at least one executable 27 application and “set of associated system files required to execute the one or more applications” 1 set of associated system files need to be “compatible with a local kernel of at least some of the 2 plurality of different operating systems” so that they can be “utilized in place of the associated 3 local system files that remain resident on the server.” Id. Additionally, the set of associated 4 system files “are copies or modified copies of the associated local system files that remain resident 5 on the server.” Id. Finally, the method of claim 1 requires that “the application software cannot 6 be shared between the plurality of secure containers of application software,” and “each of the 7 containers has a unique root file system that is different from an operating system's root file 8 system.” Id. 9 In particular, the ’814 patent claims to address the limitations of prior “solutions that 10 address the single use nature of computer systems.” ’814 pat. at 1:51-52. As VirtaMove alleges, 11 the “invention provides a solution whereby a plurality of services can conveniently be installed on 12 one or more servers in a cost effective and secure manner.’” ECF No. 68 ¶ 15 (citing id. at 2:13– 13 15). “[T]he technology of the ’814 patent requires only requires [sic] one operating system 14 regardless of the number of application containers deployed, and it ‘offers the ability for 15 applications to more effectively share a common compute platform, and also allow applications to 16 be easily moved between platforms, without the requirement for a separate and distinct operating 17 system for each application.’” ECF No. 68 ¶ 15 (citing ’814 pat. at 1:51–2:3). 18 Google argues that not only are these claim elements conventional, see ECF No. 110-1 at 19 24, but they are functional without providing the implementation details, id. at 25. The Court 20 disagrees. 21 Claim 1 of the ’814 patent does not encompass the type of functional claiming at issue in 22 Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed. Cir. 2016). There, “the 23 claims do no more than describe a desired function or outcome, without providing any limiting 24 detail that confines the claim to a particular solution to an identified problem.” Id. at 1269. Here, 25 as described above, claim 1 provides limiting detail, including having associated system files that 26 “are copies or modified copies of the associated local system files that remain resident on the 27 server” and containers with “a unique root file system that is different from an operating system's 1 pat., cl. 1. Claim 1 focuses on a specific method, not the result or effect. Thus, claim 1 of the 2 ’814 patent is not directed to an abstract idea. 3 Accordingly, because claim 1 of the ’814 patent is not directed to an abstract idea, the 4 Court need not reach Alice step two. See Core Wireless Licensing S.A.R.L., 880 F.3d at 1363 5 (“Because we hold that the asserted claims are not directed to an abstract idea, we do not proceed 6 to the second step of the inquiry.”). 7 B. Direct Infringement 8 Google next contends that VirtaMove’s second amended complaint should be dismissed 9 because VirtaMove’s did not state a claim of direct infringement. Liability for direct infringement 10 arises when a party “without authority makes, uses, offers to sell, or sells any patented invention, 11 within the United States or imports into the United States any patented invention during the term 12 of the patent.” 35 U.S.C. § 271(a). To plead direct infringement, a plaintiff must recite “some 13 factual allegations that, when taken as true, articulate why it is plausible that the accused product 14 infringes the patent claim.” Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1353 (Fed. Cir. 15 2021). “A plaintiff is not required to plead infringement on an element-by-element basis.” Id. at 16 1352 (citing Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018)). However, a 17 plausible claim requires at least some factual allegations to support a plausible inference that the 18 product at issue satisfies a claim limitation. See id. at 1355. 19 To satisfy the Iqbal pleading standard in a patent case, “[s]pecific facts are not necessary.” 20 Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018) (quotation 21 omitted). The complaint needs to only give a defendant “fair notice of what the [infringement] 22 claim is and the ground upon which it rests.” Id. (quoting Erickson v. Pardus, 551 U.S. 89, 93 23 (2007)). In addition, “[t]he level of detail required in any given case will vary depending upon a 24 number of factors, including the complexity of the technology, the materiality of any given 25 element to practicing the asserted claim(s), and the nature of the allegedly infringing device.” 26 AlexSam, Inc. v. Aetna, Inc., 119 F.4th 27, 42 (Fed. Cir. 2024) (citation omitted). 27 Here, VirtaMove’s second amended complaint satisfies the pleading standard and gives 1 claim charts as attachments to its complaint, expressly mapping each claim limitation to the 2 accused instrumentalities. See e.g. ECF No. 68-5 at 2-63 (claim chart for the ’814 pat.); see also 3 AlexSam, Inc., 119 F.4th at 42. 4 Google seems to assert that while the VirtaMove’s complaint only accuses Google’s 5 Migrate to Containers product, VirtaMove’s claim charts attached to the complaint “barely discuss 6 Migrate to Containers.” ECF No. 113 at 12. Yet VirtaMove’s claim charts, which directly cite to 7 publicly available information, are sufficient to put Google on notice. Because that is all that is 8 required at this stage, Google’s request to dismiss VirtaMove’s claim for direct infringement of 9 the ’814 patent is DENIED. 10 C. Indirect Infringement 11 Google makes three arguments in support of its request for dismissal of VirtaMove’s 12 indirect infringement claims: that VirtaMove fails to plead (1) the elements of induced 13 infringement, (2) the elements of contributory infringement, and (3) pre-suit knowledge. ECF No. 14 110-1 at 11-15. The Court addresses each in turn. 15 1. Induced Infringement 16 “Whoever actively induces infringement of a patent shall be liable as an infringer.” 35 17 U.S.C. § 271(b). To plead a claim for induced infringement, the plaintiff must show that the 18 alleged inducer (1) knew of the patent, (2) knowingly induced the infringing acts, and (3) 19 possessed a specific intent to encourage another’s infringement of the patent. Vita-Mix Corp. v. 20 Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009) (citing DSU Med. Corp. v. JMS Co., 21 471 F.3d 1293, 1304 (Fed. Cir. 2006)). Further, induced infringement is predicated on the 22 existence of direct infringement. See Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 23 1263, 1272 (Fed. Cir. 2004) (“Indirect infringement, whether inducement to infringe or 24 contributory infringement, can only arise in the presence of direct infringement.”). 25 Google argues that VirtaMove’s allegations fail to demonstrate that Google knew of the 26 infringing acts and knew that “promotion of its products would induce or encourage others to 27 infringe the asserted patents.” ECF No. 110-1 at 12. VirtaMove counters that both arguments 1 23. The Court agrees with VirtaMove. 2 Here, the second amended complaint alleges sufficient facts to show that Google knew of 3 the allegedly infringing acts and possessed specific intent. For instance, the complaint describes 4 how VirtaMove met with Google in 2015, 2020, and 2021 to try to form a partnership. ECF No. 5 68 ¶ 10. While meeting, VirtaMove demonstrated its allegedly patented software, trained Google 6 on how to use it, discussed potential implementation, and shared materials. Id. Coupled with the 7 allegations that Google “knowingly and intentionally induces infringement of claims of the ’814 8 patent,” “had knowledge of the ’814 patent and the infringing nature of the Accused Products” 9 since at least as of the filing of the complaint, and “[d]espite this knowledge of the ’814 patent, 10 [Google] continues to actively encourage and instruct its customers and end users (for example, 11 through user manuals and online instruction materials on its website) to use the Accused Products 12 in ways that directly infringe the ’814 patent,” VirtaMove adequately alleges a claim for induced 13 infringement. Id. ¶ 18. 14 2. Contributory Infringement 15 Contributory infringement is a type of indirect infringement that involves the sale of a 16 component specifically designed for use in a patented combination or process. 35 U.S.C. § 271(c) 17 (“Whoever offers to sell or sells within the United States or imports into the United States a 18 component of a patented machine, manufacture, combination or composition, or a material or 19 apparatus for use in practicing a patented process, constituting a material part of the invention, 20 knowing the same to be especially made or especially adapted for use in an infringement of such 21 patent, and not a staple article or commodity of commerce suitable for substantial noninfringing 22 use, shall be liable as a contributory infringer.”). To plead a claim for contributory infringement, a 23 patent owner must allege: “1) that there is direct infringement, 2) that the accused infringer had 24 knowledge of the patent, 3) that the component has no substantial noninfringing uses, and 4) that 25 the component is a material part of the invention.” Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 26 1326 (Fed. Cir. 2010). 27 Google asserts that VirtaMove’s allegations “amount to little more than a conclusory 1 particular, Google maintains that the complaint fails to identify what part of the accused 2 instrumentalities is a component used for infringement, or facts supporting the inference that the 3 accused component has no substantial non-infringing uses or is a material part of the invention. 4 Id. VirtaMove disagrees and cites to portions of the second amended complaint identifying 5 Google’s specially configured servers that run the accused software as the component used for 6 infringement and stating that these servers are not suitable for non-infringing uses. ECF No. 111 7 at 24 (citing ECF No. 68 ¶ 28). Google counters that VirtaMove’s identified infringing 8 component is not provided to customers for their use, but instead VirtaMove identifies servers that 9 Google servers that Google uses. ECF No. 113 at 14-15; see also ECF No. 68 ¶ 28 (“Google 10 directly infringes by its making, using (e.g., running on Google’s servers), offering for sale (e.g., 11 offering Migrate to Containers), selling (e.g., selling Migrate to Containers), and/or importing.”). 12 The Court agrees with Google on this point. 13 The second amended complaint lacks sufficient allegations to specifically identify the 14 “component is a material part of the invention” that “has no substantial noninfringing uses.” 15 Fujitsu Ltd., 620 F.3d at 1326. Even considering the complaint’s attached claim charts, as 16 VirtaMove urges the Court to do, see ECF No. 111 at 24, VirtaMove’s second amended complaint 17 fails to state a claim for contributory infringement. Google’s motion to dismiss VirtaMove’s 18 claim for contributory infringement of the ’814 patent is therefore GRANTED with leave to 19 amend. 20 3. Pre-suit knowledge 21 As noted above, indirect infringement claims require allegations of “knowledge of the 22 patent in suit and knowledge of patent infringement.” Commil USA, LLC v. Cisco Sys., Inc., 575 23 U.S. 632, 639 (2015). Google argues that VirtaMove fails to adequately plead pre-suit knowledge 24 of the ’814 patent. ECF No. 110-1 at 14-15. VirtaMove counters that the second amended 25 complaint sufficiently pleads pre-suit knowledge, based on its negotiations with Google prior to 26 the filing of the lawsuit. ECF No. 111 at 22 (citing ECF No. 68 ¶ 10). While these allegations, 27 together with those referenced above regarding Google’s post-suit knowledge of the ’814 patent 1 time of the filing of the complaint — they are insufficient to allege Google’s pre-suit knowledge 2 of the ’814 patent. Therefore, Google’s motion to dismiss VirtaMove’s induced infringement 3 claims based on Google’s actual, pre-suit knowledge of the ’814 patent is GRANTED with leave 4 to amend. 5 D. Pre-suit Damages 6 Google seeks dismissal of VirtaMove’s pre-suit damages claim for failure to plead 7 compliance with the patent marking statute. ECF No. 110-1 at 27. VirtaMove makes two points 8 in response. ECF No. 111 at 25. First, VirtaMove argues that the second amended complaint 9 properly pleads compliance with the patent marking statute by linking to a pre-suit marking 10 website. Id. (citing ECF No. 68 ¶¶ 22, 34). Second, VirtaMove argues that the marking 11 requirement does not apply to claim 1 of the ’814 patent, the only asserted claim, because it is a 12 method claim. ECF No. 111 at 25. 13 The Patent Act provides that “[p]atentees, and persons making, offering for sale, or selling 14 within the United States any patented article for or under them . . . may give notice to the public 15 that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ 16 together with the number of the patent.” 35 U.S.C. § 287(a). “Such ‘marking’ of patented 17 products is required before the patent owner may recover damages, unless notice was provided 18 another way, such as through the filing of the complaint.” Sapphire Crossing LLC v. Abbyy USA 19 Software House, Inc., 497 F. Supp. 3d 762, 768 (N.D. Cal. 2020). 20 Here, the allegations of VirtaMove’s second amended complaint sufficiently plead 21 compliance with the marking requirement. As noted above, VirtaMove not only alleges that it 22 “complied with the requirements of 35 U.S.C. § 287 and is not aware of any unmarked products 23 that practice the claims of the ’814 patent,” see ECF No. 68 ¶ 22, but asserts only ’814 patent 24 claim 1, a method claim, in the complaint. At the pleadings stage, this is sufficient. See also 25 VirtaMove, Corp. v. Hewlett Packard Enter. Co., No. 2:24-CV-00064-JRG, 2024 WL 4519761 26 (E.D. Tex. Oct. 17, 2024) (finding VirtaMove met its burden of pleading compliance with the 27 marking statute given similar allegations of infringement of the ’814 patent against a different 1 IV. CONCLUSION 2 For the reasons stated above, Google’s motion to dismiss is DENIED in part and 3 GRANTED in part as follows: 4 e Google’s motion to dismiss VirtaMove’s claim for contributory infringement of the 5 °814 patent is GRANTED with leave to amend; 6 e Google’s motion to dismiss VirtaMove’s induced infringement claims based on 7 Google’s actual, pre-suit knowledge of the °814 patent is GRANTED with leave to 8 amend; and 9 e Google’s motion to dismiss is DENIED in all other respects. 10 Should VirtaMove elect to file a third amended complaint, VirtaMove shall do so within 11 21 days of this order, or by December 19, 2025. Google’s response to the complaint shall be due 12 || by January 9, 2025. 13 IT IS SO ORDERED. 14 Dated: November 28, 2025 z Noél Wise = 16 United States District Judge

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