904 F. Supp. 2d 1260
M.D. Fla.2012Background
- Brandywine sues T-Mobile for infringement of the '922 and '717 patents under 35 U.S.C. § 271.
- T-Mobile allegedly directly and indirectly infringes, including claims of induced, contributory, willful, and joint infringement.
- Accused products include several T-Mobile handsets (e.g., Comet, G2x, Sidekick 4G, HTC Wildfire S) and related services (e.g., voicemail).
- Plaintiff alleges knowledge by T-Mobile of the patents since 2011, beginning with service of the Original Action.
- The court previously severed related action and the current motion to dismiss is under Fed. R. Civ. P. 12(b)(6).
- The court grants the motion to dismiss all indirect and related infringement theories, with leave to amend.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Form 18 sufficiency for induced infringement | Brandywine contends Form 18 suffices to plead indirect infringement. | T-Mobile argues Form 18 is insufficient for inducement pleadings following In re Bill of Lading. | Form 18 insufficient; indirect infringement requires more than Form 18. |
| Pre-suit knowledge required for inducement | Knowledge of the patents can be evidenced by the filing of the lawsuit. | Pre-suit knowledge is not required to plead inducement. | Plaintiff must plead pre-suit knowledge of the patents for inducement. |
| Pleading knowledge and intent for inducement | Brandywine alleges T-Mobile actively and knowingly induced infringement. | Allegations are conclusory and lack specific intent and pre-suit knowledge. | Inducement claim fails for lack of pre-suit knowledge and specific intent. |
| Contributory infringement pleading adequacy | Accused products have no substantial non-infringing uses and are specially adapted. | No substantial non-infringing uses proven; also services are not the target of § 271(c). | Contributory infringement claims dismissed for lack of pre-suit knowledge and adequate showing of no substantial non-infringing uses. |
| Willful infringement pleading | Knowledge obtained via pre-suit action supports willfulness. | Willfulness requires objective recklessness and pre-suit knowledge; post-suit knowledge not enough. | Willful infringement claim dismissed; no pre-suit knowledge shown and no objective recklessness pleaded. |
| Joint infringement pleading | Brandywine pleads joint infringement with HTC America, Inc. and others. | No identified product and no evidence of control/direction over joint infringers. | Joint infringement claim dismissed for failure to identify specific products and to plead a control relationship. |
Key Cases Cited
- In re Bill of Lading, 681 F.3d 1323 (Fed. Cir. 2012) (Form 18 insufficient to plead indirect infringement; need knowledge and intent for inducement)
- Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) (inducement requires knowledge that the induced acts infringe)
- DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (inducement requires knowledge and specific intent to encourage infringement)
- i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (willful infringement standards and knowledge considerations)
- Seagate Technology, LLC v. West Digital Corp., 497 F.3d 1360 (Fed. Cir. 2007) (willful infringement requires objective recklessness and knowledge)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (joint infringement requires control/direction over entire process)
- BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) (liability for joint infringement when one party controls the entire process)
- Global Patent Holdings, LLC v. Panthers BRHC, LLC, 586 F. Supp. 2d 1331 (S.D. Fla. 2008) (need explicit control/direction to attribute all steps to a party)