Showing posts with label induced infringement. Show all posts
Showing posts with label induced infringement. Show all posts

Friday, September 30, 2011

Court won't perform claim construction at motion to dismiss stage

Ecolab sued International Chemical Corp. for infringement of U.S. Patent No. 7,741,257.  Ecolab argues that ICC directly infringes the '257 patent, induces third parties to infringe the '257 patent, and contributes to other's infringement of the '257 patent.  ICC asked the court to dismiss the vicarious theories of liability because Ecolab did not sufficiently plead these claims.

First, the Court acknowledged a difference in the districts as to whether or not an indirect infringement claim needs more allegations than those listed in the Form 18 model for direct infringement claims.  Some courts hold that this level of pleading is enough, while others require the plaintiff to satisfy Twombly and Iqbal's plausibility requirements.  The Court did not pick a side, finding that Ecolab had met the mark either way.

Inducement of Infringement

To plead an induced infringement claim, the plaintiff must show: (1) there has been a direct infringement; and (2) the defendant knowingly induced infringement and specifically intended to encourage another's infringement.  ICC argued that Ecolab hadn't satisfied the latter, and pointed to Ecolab's instruction's (which were attached to the complaint).  According to ICC, these instructions "do not teach how to practice any of the claims of the patents-in-suit."  But ICC disregarded Ecolab's complaint, which alleged that ICC had instructed its customers in the manner specified by the '257 patent.  As such, for pleading purposes, the claim survived.

ICC also argue that, in order to infringe, one needed to use a particular type of nozzle.  ICC supported this argument by citing to the file history of the '257 Patent.  The Court refused to indulge in claim construction issues, noting that doing so would be premature.

Contributory Infringement

To plead a contributory infringement claim, the plaintiff must show: (1) there has been a direct infringement; (2) defendant knew the combination for which its components were especially made was both patented and infringing; and (3) defendant's components have no substantial non-infringing uses.   ICC argued that Ecolab's complaint didn't have enough facts.  The Court disagreed, noting that detailed factual allegations are not necessary to plausibly allege a claim for contributory infringement.  Even without detailed factual allegations, the complaint supported a reasonable inference for liability.

Motion to dismiss denied.

Ecolab, Inc. v. International Chemical Corp., slip op., Case No. 6:10-cv-1208 (Sept. 27, 2011) (J. Conway)

Wednesday, December 1, 2010

Selling a product that can be used in a patented method does not constitute infringement

Minsurg markets and sells to physicians the TruFUSE system for use in spinal fusion surgeries. Minsurg also owns U.S. Patent No. 7,708,761 protecting a method for performing spinal surgery. The method protected generally requires the following steps:
  1. place a portal into a human patient through a minimally invasive opening
  2. access a spinal joint through the portal
  3. insert a drill bit into the portal
  4. drill a hole into the spinal joint
  5. remove the drill bit
  6. insert a joint fusion plug into the hole drilled
  7. insert a tamping instrument into the portal
  8. tamp the fusion plug
(while not claimed in the patent, presumably the surgeon should also remove the tamping instrument.)

Minsurg sued a number of defendants who sell competing surgical systems. Minsurg sought a preliminary injunction. Magistrate Judge Jenkins conducted an evidentiary hearing recommended denial of Minsurg's motion. The decision turned on how important "minimally invasive" was.

First, to get a preliminary injunction, Minsurg needed to establish that it was: (1) likely to succeed on the merits; (2) likely to suffer irreparable harm without the injunction; (3) the balance of hardships favored Minsurg; and (4) the public interest would be best served by granting the injunction.

A problem for Minsurg was that the '761 Patent protects a method of performing surgery, but the defendants were not the surgeons who allegedly practice the method. The defendants sell products which can be used to practice the method. So Minsurg asserted three theories of liability: (1) Defendants directly infringed the patent; (2) Defendants actively induced their customers to practice the method; and (3) Defendants contributed to the infringement.

To have patent infringement (under any of the theories), there must be an act of direct infringement. And with a method patent, direct infringement happens "only by one practicing the patented method." Joy Techs., Inc. v. Flakt, Inc., 6 F. 3d 770, 775 (Fed. Cir. 1993).

Direct Infringement

Because the Defendants themselves do not perform the steps of the method, they are not direct infringers:
Defendants do not perform the steps of the process set forth in the '761 Patent because they do not perform spinal fusion surgeries. Rather, Defendants sell systems used by physicians to perform such surgeries. Consequently, Plaintiff is not likely to succeed on its claims of direct infringement.
(This does not seem to have been a tough part of the decision, and skimming Plaintiff's motion, it does not appear Plaintiff really pursued direct infringement as a grounds for preliminary injunction here.)

Indirect Infringement - Induced infringement and Contributory infringement

Even though a defendant does not directly infringe a patent, it can still be held liable if it actively induces others to infringe the patent or contributes to another's infringement of the patent (where the piece the defendant contributes has no alternative non-infringing uses). Minsurg's theory here was that Defendants sold their kits and instructed their customers (the surgeons) on how to use them. And using the kits required practicing the claimed method. The Court did not agree.

As a factual matter, the claimed method requires the portal to be placed into a patient through a "minimally invasive" opening. Defendants offered testimony that the vast majority of spinal surgeries are done through an "open incision," as opposed to through a "minimally invasive incision." Thus, none of the Defendants' systems necessarily infringe because they can be used in non-infringing ways -- specifically when they are used through an "open incision."

Because there is a substantial, non-infringing use, Minsurg's only hope was to show evidence of active and willful inducement. "Evidence of active steps taken to induce infringement, such as advertising an infringing use, can support a finding of an intention for the product to be used in an infringing manner." Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009). Minsurg presented evidence of Defendants' advertising showing their systems being used in both open incisions and minimally invasive incisions. But Minsurg did not have any evidence of any physicians actually using the equipment in a minimally invasive procedure. And the advertising evidence did not appear to be sent out after the '761 Patent issued. (Thus, how could one market infringing steps before the patent laying out what infringement entailed issues. Presumably, there is an argument that whatever intervening rights attached to the '761 Patent during prosecution could help Minsurg here, but that is a topic for another post.)

Motion for preliminary injunction denied.

Minsurg International, Inc. v. Frontier Devices, Inc., Case No. 8:10-cv-1589, slip op. (Feb. 7, 2011) (J. Covington) adopting Report & Recommendation of Mag. Jenkins

Thursday, August 13, 2009

Microsoft Word + custom XML = no more?

Tuesday, Judge Davis of the Eastern District of Texas entered a permanent injunction against Microsoft, enjoining the company from:
1. selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;
2. using any Infringing and Future Word Products to open an XML file containing custom XML;
3. instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;
4. providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and
5. testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.
The Court also entered final judgment, with damages:
  • $200 million for infringement
  • $40 million for willful infringement
  • ~$11.8 million for post-verdict damages
  • ~$38 million in pre-judgment interest
  • (for a total of ~$290 million)
i4i sued Microsoft for infringing U.S. Patent No. 5,787,449 directed to separately manipulating the architecture and content of a document. The '449 invention relied upon a "metacode map," which allowed a reliable method of manipulating the structure of a document without reference to its content. Claims 1-13 were found to be invalid for being indefinite under 35 U.S.C. § 112 ¶ 2.

Claim 14 provides:
14. A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:
providing the mapped content to mapped content storage means;
providing a menu of metacodes; and
compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and
providing the document as the content of the document and the metacode map of the document.

Direct Infringement

Microsoft's offered 3 arguments that there was no direct infringement: (1) no evidence that Word created a "data structure," as required by the Court's construction of the term "metacode map;" (2) insufficient evidence that Word contained "metacodes;" and (3) improper construction of the terms "distinct map storage means," "mapped content storage means," and "mapped content storage." The Court was not persuaded by any of these arguments.

Indirect Infringement

Microsoft next argued that contributory and inducement infringement was also improper. The Court explained:
A cause of action for contributory infringement flows from 35 U.S.C. § 271(c). That section provides:

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

Induced infringement is a separate cause of action from contributory infringement. “In order to prevail on an inducement claim, the patentee must establish first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement.” ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1312 (Fed. Cir. 2007) (internal quotation marks omitted). “[I]nducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the
inducer had knowledge of the direct infringer's activities.” Id. at 1306. Furthermore, “[t]he plaintiff has the burden of showing that the alleged infringer's actions induced infringing acts and that he knew or should have known his actions would induce actual infringements.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (quoting Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed. Cir. 1990)).

Both forms of indirect infringement require the plaintiff to prove corresponding acts of direct infringement. See DSU Med. Corp., 471 F.3d at 1303. Importantly however, a patentee may prove both indirect infringement and the corresponding direct infringement by circumstantial evidence. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1219 (Fed. Cir. 2006). “There is no requirement that direct evidence be introduced, nor is a jury's preference for circumstantial evidence over direct evidence unreasonable per se.” Id. Moreover, “[t]he drawing of inferences, particularly in respect of an intent-implicating question . . . is peculiarly within the province of the fact finder that observed the witnesses.” Rolls-Royce Ltd. v. GTE Valeron Corp., 800 F.2d 1101, 1110 (Fed. Cir. 1986); see also Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1378 (Fed. Cir. 2005) (declining to disturb jury's verdict because intent to induce infringement “is a factual determination particularly within the province of the trier of fact”).
Microsoft offered 3 arguments concerning contributory infringement: (1) insufficient evidence that Microsoft knew Word was "patented and infringing;" (2) insufficient evidence that Word did not have a substantial non-infringing use; and (3) the software couldn't form the basis of a contributory infringement claim because the only claims asserted were process claims. The Court was not persuaded by any of these arguments.

To prevail on a charge of willful infringement, the patentee must show the accused infringer acted with objective recklessness. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). First, the patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions infringed a valid patent. Id. The accused infringer's state of mind is irrelevant to this objective inquiry. Id. If the patentee meets this threshold objective standard, the patentee must further demonstrate that the accused infringer knew or should have
known of this objectively high risk. Id. Whether infringement is willful is a question of fact and reviewed for substantial evidence. Metabolite Labs., Inc. v. Labs. Corp. of Am. Holdings, 370 F.3d 1354, 1359 (Fed. Cir. 2004).
Microsoft offered a number of arguments, none of which were convincing to the Court, including: (1) because the Court invalidated some claims of the '449 patent, Microsoft asserted defenses to the remaining claims, and i4i involuntarily dismissed some accused products, there was no willfulness; and (2) insufficient evidence of whether Microsoft knew of the likelihood of infringement.

The Court then addressed obviousness and anticipation, as well damages.

The Court's claim construction order (also granting partial summary judgment of invalidity) can be found here. Supplemental claim construction here.

The Court's 65-page memorandum and order can be found here. The permanent injunction can be found here. And the final judgment can be found here.