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Groove Digital, Inc. v. United Bankshares, Inc.

United States District Court, E.D. Virginia, Richmond Division

July 23, 2018



          M. Hannah Lauck, United States District Judge.

         This matter comes before the Court on Defendant United Bankshares, Inc.'s ("United Bankshares") Motion to Dismiss. (ECF No. 14.) Plaintiff Groove Digital, Inc. ("Groove") responded, and United Bankshares replied. (ECF Nos. 16, 17.) Accordingly, this matter is ripe for disposition. The Court dispenses with oral argument because the materials before it adequately present the facts and legal contentions, and argument would not aid the decisional process. The Court exercises jurisdiction pursuant to 28 U.S.C. §§ 1331[1] and 1338.[2] For the reasons that follow, the Court will deny the Motion to Dismiss without prejudice and order jurisdictional discovery.[3]

         I. Procedural and Factual Background

         A. Procedural History

         On December 1, 2017, Groove filed its Complaint, alleging direct and indirect patent infringement against United Bankshares. Groove seeks a declaration of infringement, a permanent injunction against any further infringement, and an award of damages. United Bankshares filed a Motion to Dismiss seeking dismissal of Groove's Complaint for: (1) failure to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6); (2) improper venue under Federal Rule of Civil Procedure 12(b)(3) and Local Civil Rule 3; and, (3) lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2). Groove responded, and United Bankshares replied.

         B. Factual History

         1. Factual Allegations Relevant to Groove's Claim of Infringement

         Groove owns U.S. Patent No. 9, 454, 762 ("the '762 Patent"), titled "System and Method for the Delivery of Content to a Networked Device." (Compl. ¶ 3, ECF No. 1.)

The '762 Patent generally claims improvements in the delivery and display of digital content to computer systems by using applet applications .... The improvements include the use of app-based alerts known as "push-notifications" to provide (i) content directly to a device, and (ii) browser links to specific web pages .... Additional improvements include the ability of the apps to passively deploy and terminate operation without requiring any input from the user of the device and to deliver content independent of the browser used.....
As a result of the improvements provided by the '762 Patent, the overall functionality of computer systems' content delivery has been improved to the extent that passively-deployed browser-independent app-based content accounts for an increasingly substantial portion of content delivery in the smartphone and tablet market.

(Id. ¶ 10-11.)

         Groove contends that United Bankshares infringed, and continues to infringe, "literally or through the doctrine of equivalents, directly, jointly, or indirectly, contributorily, and/or through the inducement of others, one or more claims4 of the '762 Patent." (Id. ¶ 14.) According to Groove, United Bankshares infringes on the '762 Patent by "making, using, offering to sell and/or selling ... its 'Bank with United' mobile banking application." (Id.) As to the alleged indirect infringement, United Bankshares purportedly encourages direct infringement through widely publicizing its "Bank With United" mobile application, and through providing tools and instructions on its website for conducting the directly infringing use. (Id. ¶ 21.) Groove asserts that United Bankshares additionally encourages and instructs its customers "to perform some or all of the claimed [infringing] steps," and sometimes performs "certain of the steps itself in coordination" with its customers' performance. (Id. ¶ 22.)

         2. Factual Allegations Relevant to Personal Jurisdiction

         Groove, incorporated in Delaware with a principal place of business in Morristown, New Jersey, alleges that United Bankshares is a Virginia corporation with its principal place of business in Vienna, Virginia. United Bankshares denies this allegation, asserting that it "is incorporated in West Virginia and headquartered in Charleston, West Virginia-not Virginia." (Mem. Supp. Mot. Dismiss 2, ECF No. 14.) United Bankshares attaches to its Motion to Dismiss a declaration by its attorney with three exhibits, which the attorney affirms are "true and accurate coppes]" of searches conducted on publicly accessible websites. (Rodkey Decl., ECF No. 15-1.)

         Exhibit one "is a true and accurate copy of the Business Organization Detail for United Bankshares, retrieved from the publicly accessible West Virginia Secretary of State, Business Organization Search." (Id. ¶ 3.) That document indicates that "United Bankshares, Inc.," has a "[c]harter [s]tate" of West Virginia, and a "[p]rincipal [o]ffice [a]ddress" in Charleston, West Virginia. (Rodkey Decl. Ex. 1 at 1-2, ECF No. 15-2.) The exhibit further identifies "[m]ergers" occurring in 2008 and 2017, all denoting United Bankshares, Inc., as the "[s]urvived" entity, and West Virginia as the "[s]urvived [s]tate." (Id. at 2.) The exhibit includes the following disclaimer at the top of the page:

NOTICE: The West Virginia Secretary of State's Office makes every reasonable effort to ensure the accuracy of information. However, we make no representation or warranty as to the correctness or completeness of the information. If information is missing from this page, it is not in the ...

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