415 F.Supp.3d 482
D. Del.2019Background
- Boston Scientific sued Nevro alleging infringement of nine patents covering spinal cord stimulation (SCS) systems, trade secret misappropriation under California CUTSA, and tortious interference.
- The accused products are Nevro's Senza I and Senza II SCS systems (rechargeable implantable pulse generator, external charger, patient remote and clinician programmer).
- Boston Scientific alleges former employee Jim Thacker took thousands of confidential Boston Scientific documents (including a "Stimulus™ Confirmatory Study" and a Module Specification) and disclosed them to Nevro while employed there.
- The complaint asserts direct, induced, contributory, export (§271(f)) infringement and seeks enhanced damages for willfulness; it also asserts CUTSA and tortious interference claims.
- Nevro moved to dismiss under Fed. R. Civ. P. 12(b)(6). The court granted in part and denied in part: most direct, induced, contributory, and willfulness-enhancement claims were dismissed, while one direct-infringement count (#690), export (§271(f)), and CUTSA claims survived; tortious interference was dismissed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Direct infringement — Counts I–VII & IX (eight patents) | Accused Senza products meet each asserted claim element; linked materials support that | Pleadings fail to connect specific product components to claim elements; exhibits cannot substitute for factual allegations | Dismissed for failure to plausibly plead direct infringement |
| Direct infringement — Count VIII (#690 patent) | Senza systems include IPG with replenishable power, external programmer in telecommunicative contact, memory recording charge info, and status indicator | Disputed but no successful dismissal argument | Survives; factual allegations sufficiently tie Senza features to claim 1 |
| Induced and contributory infringement | Nevro provided instructions/support and knew of patents | Induced/contributory liability requires underlying direct infringement and knowledge that actions infringe | Dismissed for Counts I–VII & IX (no direct infringement); for #690 claims dismissed for failure to allege Nevro knew its conduct infringed |
| Export infringement (§271(f)) | Nevro exported infringing systems to Europe and Australia | Argued dismissal on similar grounds as inducement/contributory | Denied dismissal; §271(f) claims survive |
| Enhanced damages for willfulness (§284) | Alleges Nevro's infringement was knowing, deliberate, and willful | Must plead facts showing knowledge that conduct constituted infringement or willful blindness; conclusory labels insufficient | Dismissed for failure to plead plausible willful knowledge of infringement |
| CUTSA trade secret misappropriation | Thacker took and transmitted confidential, marked Boston Scientific documents; Nevro knowingly acquired and used them | Argued documents insufficiently described, public disclosure, or no knowing acquisition/use | Survives; trade secrets pled with adequate particularity and pleading alleges knowing acquisition/use |
| Tortious interference with contract | Nevro intentionally induced Thacker to breach or disrupt his contract | Claim preempted or insufficiently pled intentional inducement | Dismissed for failure to plead the required intentional acts to induce breach |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (established pleading plausibility standard)
- Ashcroft v. Iqbal, 556 U.S. 662 (plausibility requires factual content permitting reasonable inference of liability)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (enhanced damages under §284 reserved for egregious, willful conduct)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (induced infringement requires knowledge that induced acts constitute infringement)
- Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915 (inducement liability depends on existence of direct infringement)
- Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (induced and contributory infringement require knowledge of the patent and infringement)
- SRI Int'l v. Cisco Sys., 930 F.3d 1295 (Fed. Cir. 2019) (discusses Halo and that enhanced damages require more than mere knowing infringement)
- Disc Disease Solutions Inc. v. VGH Solutions, Inc., 888 F.3d 1256 (Fed. Cir. 2018) (pleading sufficiency in simple-technology cases)
- Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337 (Fed. Cir. 2018) (patentee must provide facts linking accused product to claim elements to give notice)
- Waymark Corp. v. Porta Sys. Corp., 245 F.3d 1364 (Fed. Cir. 2001) (§271(f)(2) does not incorporate contributory infringement doctrine)