Opinion

1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 SOUTHERN DISTRICT OF CALIFORNIA 9 10 PERFORMANCE DESIGNED Case No.: 3:25-cv-01360-RBM-JLB PRODUCTS LLC, 11 ORDER DENYING MOTION FOR Plaintiff, 12 JUDGMENT ON THE PLEADINGS v. 13 [Doc. 20] OKYN HOLDINGS, INC., doing business 14 as Nyko Technologies, 15 Defendant. 16 17 The present action involves two consolidated patent cases. In one, Performance 18 Designed Products, LLC (“Plaintiff” or “PDP”) seeks a declaration of non-infringement. 19 (See Doc. 48 at 2.) In the other, OKYN Holdings, Inc. (“Defendant” or “Nyko”) asserts 20 claims of patent infringement. (See id. at 3.) Both concern the same four patents: U.S. 21 Patent Nos. 8,143,848 (“the ’848 Patent”); 8,536,832 (“the ’832 Patent”); 9,705,344 (“the 22 ’344 Patent”); and 9,174,121 (“the ’121 Patent”) (collectively, “the Asserted Patents”). 23 Presently before the Court is PDP’s Motion for Judgment on the Pleadings 24 (“Rule 12(c) Motion”). (Doc. 20.) Nyko filed an Opposition to Plaintiff’s Motion for 25 Judgment on the Pleadings (Doc. 26), and PDP filed a Reply in Support of its Motion 26 (Doc. 27). The Court finds this matter suitable for determination without oral argument 27 pursuant to Civil Local Rule 7.1(d)(1). Having reviewed the pleadings above, and for the 28 reasons below, PDP’s Rule 12(c) Motion is DENIED. 1 I. BACKGROUND 2 A. Parties 3 Nyko is the owner of the Asserted Patents. (Doc. 53 (“Nyko Compl.) ¶¶ 9–12.) 4 Each of the Asserted Patents relates to “charging systems for consumer electronics devices, 5 and more particularly to charging systems for hand-held video game controllers.” (See 6 Doc. 1-2 at 27.) The Asserted Patents are “charging station[s] capable of charging multiple 7 video game controllers simultaneously.” NYKO Techs. v. Energizer Holdings Inc., Case 8 No. CV 12-3001 GAF (VBKx), 2013 WL 11232100, at *2 (C.D. Cal. Oct. 22, 2013). PDP 9 provides “third-party gaming peripherals, such as controllers, headsets, and accessories,” 10 and “is a preferred partner for each of the major gaming console providers, including 11 Nintendo (Switch), Microsoft (X-Box), and Sony (PlayStation).” (Doc. 1 ¶¶ 8–9.) Nyko 12 alleges that PDP infringed certain claims of each of the Asserted Patents through PDP’s 13 “Ultra Slim Charge System for PlayStation 4” (“the Accused Product”), which is a 14 charging dock for the PlayStation 4 gaming console. (Nyko Compl. ¶ 17.) 15 B. Factual Background1 16 In 2012, Nyko filed a patent infringement lawsuit against PDP in the Central District 17 of California (“the Prior Action”), asserting infringement of several claims of the ’848 18 Patent. See Energizer Holdings, 2013 WL 11232100, at *1. Those claims are not at issue 19 in the present action. See id. In August 2013, PDP and Nyko were discussing potential 20 settlement, and Nyko “specifically demanded that PDP not make or sell the ‘adapter 21 embodiment’—an embodiment that is recited in all the asserted claims of each of the 22 Asserted Patents.” (Nyko Compl. ¶ 15.) The Parties also discussed “the ’848 patent family, 23 which included the ’832 Patent—a child application of the ’848 Patent—that was published 24 and subsequently issued at the time of the discussion.” (Id.) 25 26 27 1 The factual summary in this section reflects the non-movant’s allegations, not conclusions of fact or law by this Court. Well-pled factual allegations are accepted as true 28 1 All the Asserted Patents were issued before PDP launched the Accused Product in 2 or around 2019. (Id. ¶ 18.) Additionally, before PDP launched the Accused Product, the 3 Nyko CEO met the PDP CEO at a tradeshow and “specifically demanded that PDP not 4 make or sell any video game chargers that would infringe” Nyko’s patents. (Id. ¶ 19.) “In 5 response, [PDP’s CEO] . . . told [Nyko’s CEO] that nothing will stop PDP from selling the 6 Accused Product and [Nyko] will just have to do what it needs to do.” (Id.) PDP then 7 launched the Accused Product, which included an “adapter.” (Id.) PDP’s marketing 8 materials from around this time “include[ ] its analysis of competitors’ products and patents 9 in connection with the Accused Product, including [Nyko’s] patents and [Nyko’s] products 10 that practice the claims of the Asserted Patents.” (Id. ¶ 21.) In these materials, PDP 11 “specifically noted the existence of [Nyko’s] multiple patents covering its adapter 12 embodiment.” (Id.) 13 On October 31, 2024, Nyko sent a cease-and-desist letter (“the Letter”) to PDP, 14 “specifically alleging that the Accused Product infringes the claims of the Asserted Patents 15 and demanding that [PDP] cease their infringing conduct.” (Id. ¶ 29.) 16 II. LEGAL STANDARD 17 Rule 12(c) allows parties to move for judgment on the pleadings after the pleadings 18 have been closed but prior to trial, and “within such time as not to delay the trial.” Fed. R. 19 Civ. P. 12(c). The standard for determining a Rule 12(c) motion for judgment on the 20 pleadings is the same as the standard for a Rule 12(b)(6) motion to dismiss. Cafasso, U.S. 21 ex rel. v. Gen. Dynamics C4 Sys., Inc., 637 F.3d 1047, 1053, 1054 n.4 (9th Cir. 2011) 22 (“Rule 12(c) is ‘functionally identical’ to Rule 12(b)(6) and that ‘the same standard of 23 review’ applies to motions brought under either rule.”) (quoting Dworkin v. Hustler 24 Magazine Inc., 867 F.2d 1188, 1192 (9th Cir. 1989)). “Judgment on the pleadings is proper 25 when the moving party clearly establishes on the face of the pleadings that no material 26 issue of fact remains to be resolved and that it is entitled to judgment as a matter of law.” 27 Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc., 896 F.2d 1542, 1550 (9th Cir. 1989). 28 A court must not consider matters beyond the pleadings; otherwise, such a proceeding must 1 properly be treated as a motion for summary judgment. Id.; see also Yakima Valley Mem’l 2 Hosp. v. Wash. State Dep’t of Health, 654 F.3d 919, 925 n.6 (9th Cir. 2011) (“Judgment 3 on the pleadings is limited to material included in the pleadings . . . [o]therwise, the 4 proceeding is converted to summary judgment.”) (citations omitted). 5 III. DISCUSSION 6 PDP claims that “Nyko’s allegations that [PDP] has indirectly and willfully 7 infringed [the Asserted Patents] before PDP received [the Letter] fail as a matter of law.” 8 (Doc. 20 at 5.) Specifically, PDP argues that neither (1) Nyko’s patent marking nor 9 (2) Nyko and PDP’s previous litigation “concerning a different patent in the same family” 10 are sufficient to establish PDP’s actual knowledge for indirect or willful infringement 11 claims. (Id. (emphasis in original).) PDP also claims that, because “video game controller” 12 is a limitation of every claim, and because Nyko does not plead infringement of that 13 limitation, PDP is entitled to judgment as a matter of law. (Id.) 14 Nyko argues that PDP either (1) had actual knowledge—via the previous litigation 15 or Nyko’s marking—of the Asserted Patents before the Letter or (2) willfully blinded itself 16 to knowledge of the Asserted Patents. (Doc. 26 at 18–21.) Nyko also argues it “is not 17 required to show that the Accused Product includes ‘a video game controller,’ only that it 18 is capable of operating in such an environment.” (Id. at 17.) 19 A. Video Game Controller 20 The Court thoroughly analyzed the relevant scope of “video game controller” in its 21 Claim Construction Order (see Doc. 79 at 16–21) after considering the Parties’ briefs (see 22 Docs. 39–40, 43–44) and oral arguments (see Doc. 66 at 31:13–45:2, 52:12–53:21). In its 23 Claim Construction Order, the Court concluded “that ‘video game controller’ is a limitation 24 of the claimed environment, not the claimed invention.” (Doc. 79 at 21 (emphasis added).) 25 The Court incorporates its reasoning from its Claim Construction Order here and DENIES 26 PDP’s Rule 12(c) motion to the extent it seeks judgment because the Accused Product does 27 not include a “video game controller.” The Court turns next to whether Nyko adequately 28 pled that PDP had knowledge of the Asserted Patents. 1 B. Knowledge 2 As relevant here, claims of indirect or willful infringement require a showing that 3 the accused infringer had actual knowledge of the asserted patent, knowledge of the 4 infringement, and specific intent to infringe. See Global-Tech Appliances, Inc. v. SEB S.A., 5 563 U.S. 754, 766–68 (2011); Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 639 6 (2015). Analyzing Global-Tech and Commil, the Federal Circuit has held that “willful 7 blindness can satisfy the knowledge requirement . . . even in the absence of actual 8 knowledge,” and that knowledge “can be inferred from circumstantial evidence.” Warsaw 9 Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016). Furthermore, 10 every appellate court to have articulated the doctrine of willful blindness “agree[s] on two 11 basic requirements: (1) [t]he defendant must subjectively believe that there is a high 12 probability that a fact exists and (2) the defendant must take deliberate actions to avoid 13 learning of that fact.” Global-Tech, 563 U.S. at 769. 14 PDP argues that it is entitled to judgment on the pleadings because Nyko “pled no 15 facts plausibly alleging PDP’s knowledge [of the Asserted Patents] before receiving the 16 Letter.” (Doc. 20 at 8.) The Court disagrees with PDP. At the Rule 12(c) stage, the Court 17 finds that Nyko has “pleaded sufficient facts for the Court to infer that [PDP] had 18 knowledge of [Nyko’s] patents and that [the Accused Product] infringed on those patents.” 19 See Weiland Sliding Doors & Windows, Inc. v. Panda Windows & Doors, LLC, No. 20 10CV677 JLS (MDD), 2012 WL 202664, at *4 (S.D. Cal. Jan. 23, 2012) (citation omitted) 21 (emphasis in original). 22 PDP argues that “‘[m]ere knowledge of a patent family or the plaintiff’s patent 23 portfolio is not enough’” to satisfy the indirect or willful infringement knowledge 24 requirement. (Doc. 20 at 10 (quoting Sonos, Inc. v. Google LLC, 591 F. Supp. 3d 638, 643 25 (N.D. Cal. 2022)).) The Court agrees with that as a general proposition. See also Zimmer 26 Surgical, Inc. v. Stryker Corp., C.A. No. 16-679-RGA-MP, 2017 WL 1296026, at *5 27 (D. Del. Apr. 6, 2017) (“It is well-established that mere knowledge of one patent in a patent 28 family . . . does not establish actual knowledge of a different patent in that family.”) 1 (citations omitted), report and recommendation adopted in part, rejected in part, 2017 WL 2 ||3736750 (D. Del. Aug. 30, 2017). However, Nyko does not allege that PDP had knowledge 3 ||of the Asserted Patents solely because the Parties had discussed the same patent family 4 ||during the Prior Action. Rather, Nyko alleges that: (1) these prior discussions occurred; 5 the Nyko and PDP CEOs had a conversation about the patents allegedly underlying the 6 || Accused Product at a trade show; (3) Nyko had marked its products for over a decade in a 7 ||small marketplace where PDP was one of its direct competitors; and (4) PDP prepared 8 ||marketing materials that “specifically noted the existence of [Nyko’s] multiple patents 9 || covering its adapter embodiment.” (Nyko Compl. 4 15-21.) 10 Taken together, these allegations plausibly demonstrate that PDP either had actual 11 || knowledge of, or was willfully blind to knowledge of, the Asserted Patents. See Weiland 12 || Sliding Doors, 2012 WL 202664, at *4 (denying motion to dismiss induced infringement 13 claim where the plaintiff alleged that they and the defendant were “competitors in the high- 14 || end sliding doors and windows market, bearing on the likelihood that [the defendant] had 15 || knowledge of existing patents in that industry, including [the plaintiff’s]”); ALS Scan, Inc. 16 Cloudflare, Inc., Case No. CV 16-5051-GW (AFMx), 2018 WL 11350606, at *10-11 17 ||(C.D. Cal. Mar. 13, 2018) (denying motion for summary judgment on a contributory 18 infringement claim, in part because actual knowledge is more appropriately determined by 19 jury). Accordingly, the Court also DENIES PDP’s Rule 12(c) motion on actual 20 || knowledge grounds. 21 IV. CONCLUSION 22 Based on the foregoing, the Court DENIES PDP’s Rule 12(c) Motion (Doc. 20). 23 IT IS SO ORDERED. 24 Dated: August 6, 2026 FR a ? L > 25 HON. RUTH BERMUDEZ MONTENEGRO 26 UNITED STATES DISTRICT JUDGE 27 28