The Software IP Report

Conclusory Pleadings Insufficient to Support Indirect Patent Infringement Claims

By Charles Bieneman

Categories: Patent Civil Procedure, The Software IP Report

While the Federal Circuit has held that adherence to Form 18 of the Federal Rules of Civil Procedure is sufficient to support a claim of direct patent infringement, courts have not uniformly addressed the requirements for pleading indirect infringement, i.e., contributory infringement and infringement by inducement. In one recent example, the court held that a plaintiff’s conclusory statements concerning contributory and induced infringement were insufficient to sustain claims of indirect patent infringement. SkipPrint, LLC v. Rastar, Inc., No. 2:13-cv-00039 (D. Utah Aug. 16, 2013.)

The plaintiff brought suit alleging direct and indirect infringement of five patents of which it was the exclusive licensee. Following an amended complaint, the defendant brought a motion to dismiss the indirect patent infringement claims.

The court began its analysis by citing the U.S. Supreme Court’s Iqbal and Twombley decisions, as well as the Federal Circuit’s decision in In re Bill of Lading, 681 F.3d 1323 (Fed. Cir. 2012). Saying nothing about the pleading requirements for direct infringement, the court noted that pleading indirect infringement, according to this precedent, required more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements.”

Regarding contributory infringement, the amended complaint provided a similar allegation with respect to all five patents-in-suit, exemplified by the following:

On information and belief, Defendant has also indirectly infringed and continues to indirectly infringe the ‘080 patent by contributory infringement by providing non-staple articles of commerce to others for use in an infringing system or method with knowledge of the ‘080 patent and knowledge that these non-staple articles of commerce are used as a material part of the claimed invention of the ‘080 patent.

This pleading, even when viewed in the light most favorable to the plaintiff, failed “to put forth any facts that ‘allow an inference’ that components of defendant’s systems and services ‘have no substantial non-infringing use.’” Moreover, the complaint did not address “other substantial non-infringing uses” at all. The plaintiff attempted to argue in its briefing that the defendant knew that the accused systems were specifically adapted for infringing uses, but these facts were not alleged in the amended complaint.

Concerning induced infringement, the amended complaint again provided similar allegations for all five patents-in-suit, exemplified by the following:

On information and belief, Defendant has also indirectly infringed and continues to indirectly infringe the ‘080 patent by actively inducing others to cause direct infringement—specifically, customers and partners of Defendant—who operate systems and methods that embody or otherwise practice one or more claims of the ‘080 patent when Defendant had knowledge of the ‘080 patent and knew or should have known that their actions would induce direct infringement by others and intended that their actions would induce direct infringement by others.

A mere conclusory statement that the “defendant had knowledge of the patents-in-suit is not enough to survive a motion to dismiss.” Further, reference to the defendant’s alleged marketing materials and the like in the plaintiff’s briefing was to no avail, because these things were not mentioned in the complaint. There were no allegations in the complaint that the defendant had the specific intent to induce infringement required by Federal Circuit precedent. In sum, “plaintiff’s amended complaint does not include facts sufficient to allow an inference that ‘actual infringement occurred’ as a result of defendants alleged inducement.”

Accordingly, the court dismissed the indirect infringement claims in the plaintiff’s amended complaint without prejudice.