The Software IP Report

Pleading Indirect and Willful Patent Infringement Requires Specific Allegations

Claims for induced, contributory, and willful patent infringement were dismissed (without prejudice) because the plaintiff failed to allege facts sufficient to support its claims.  Unisone Strategic IP, Inc. v. Life Techs. Corp., No. 3:13-cv-1278-GPC-JMA (S.D. Cal. Oct. 22, 2013).  The plaintiff had alleged infringement of U.S. Patent No. 6,996,538, directed to “[a] system and method which allows third-parties to monitor company inventory via the Internet . . . and automatically order needed items.”

Induced infringement requires knowledge of a patent and specific intent to encourage infringement.  The court here adopted the “post-filing” rule, i.e., held that the defendant’s knowledge of the patent gained after filing of a suit was sufficient to meet the knowledge requirement for pleading inducement.  However, the plaintiff failed to allege “that the filing of the Complaint satisfied the knowledge requirement for induced infringement,” and therefore “fail[ed] to state a claim for induced infringement.”

Further, the “Plaintiff also fail[ed] to sufficiently allege Defendant had the specific intent to induce others to infringe.” Allegation of specific intent to induce infringement must amount to more than allegations of intent to cause acts of infringement; the plaintiff must plead that the defendant specifically intended to cause direct infringement.  Here, the plaintiff simply alleged that the defendant “has the specific intent to encourage its customers and suppliers to infringe the ‘538 patent directly by (among other things) intentionally encouraging and/or aiding its customers and suppliers to use [Defendant’s] SCMS software.” However, “[t]his allegation fails because Plaintiff must allege ‘more than just an intent to cause the acts that produce direct infringement.'”

Likewise, the plaintiff failed to allege contributory patent infringement, which the court explained does not require a specific intent to cause infringement, but does require alleging “facts showing how any component of Defendant’s SCMS software is especially made or especially adapted for use in an infringing ‘material or apparatus.'”  The complaint here simply parroted language from 35 U.S.C.  § 271(c), and did “not allege any facts regarding which component of Defendant’s SCMS software is made or adapted for use in an infringement.”

Further, a claim for willful patent infringement was dismissed because the plaintiff did no more than allege that it believed that the defendant willfully infringed the patent-in-suit.  The plaintiff had thus “fail[ed] to meet the minimum standard of pleading even the ‘barest factual assertion of knowledge.'”