411 F.Supp.3d 162
D. Mass.2019Background
- Canon Inc. owns U.S. Patent No. 10,135,952 concerning a method for streaming web‑accessed, compressed video data.
- Canon sued Avigilon USA Corp. and Avigilon Corp. (camera/video surveillance manufacturers) for direct, induced, and willful infringement on April 23, 2019 in D. Mass.
- Canon alleges Avigilon markets a feature in its products that practices the patent and that Avigilon instructs customers to use that feature in an infringing manner.
- Canon asserts Avigilon had prior knowledge of the ’952 patent and that circumstantial evidence shows intent to induce; Canon also claims willful infringement.
- Avigilon moved to dismiss induced‑infringement and willful‑infringement claims under Fed. R. Civ. P. 12(b)(6) as conclusory and insufficiently pleaded.
- The court dismissed the induced and willful infringement claims without prejudice, concluding Canon failed to plead facts showing Avigilon had pre‑suit knowledge of the patent and that Canon relied impermissibly on post‑filing knowledge.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of induced‑infringement pleading (knowledge element) | Canon: Avigilon knew of the ’952 patent (including after suit) and knowingly induced customers to infringe. | Avigilon: Allegations are conclusory; Canon fails to allege pre‑suit (actual) knowledge required to plead inducement. | Dismissed without prejudice — Canon did not plead facts showing pre‑suit knowledge; post‑filing knowledge based on the complaint is insufficient at filing. |
| Sufficiency of willful‑infringement pleading | Canon: Avigilon’s infringement was willful based on knowledge and circumstantial evidence. | Avigilon: Canon fails to allege pre‑suit knowledge and thus cannot show willfulness; post‑suit knowledge cannot bootstrap pre‑suit claims. | Dismissed without prejudice — no adequate allegation of pre‑suit knowledge, so willfulness claim fails at pleading stage. |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading must contain sufficient factual matter to be facially plausible)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility standard for complaints)
- Ocasio‑Hernández v. Fortuño‑Burset, 640 F.3d 1 (1st Cir. 2011) (court must draw reasonable inferences from non‑conclusory allegations)
- Haley v. City of Boston, 657 F.3d 39 (1st Cir. 2011) (limits on judicial consideration beyond complaint and incorporated documents)
- Vita‑Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (elements of induced infringement include knowledge and specific intent)
- Zond, Inc. v. Fujitsu Semiconductor Ltd., 990 F. Supp. 2d 50 (D. Mass. 2014) (discussing pre‑ vs. post‑suit knowledge in pleading induced infringement)