1 F. Supp. 3d 1020
C.D. Cal.2014Background
- Plaintiff MyMedicalRecords, Inc. (MMR) sued Jardogs and later Allscripts alleging infringement of U.S. Patents Nos. 8,301,466 and 8,498,883 related to secure patient access/collection of health records.
- Procedural history: MMR originally sued Jardogs (May 17, 2013), later filed and dismissed an Allscripts complaint, then added Allscripts to the Jardogs action; MMR alleges Allscripts acquired Jardogs’ assets in March 2013.
- Allscripts moved to dismiss MMR’s Second Amended Complaint for failure to plead requisite knowledge, intent, and lack of substantial non-infringing uses for indirect, contributory, and willful infringement claims.
- Central legal question: whether a plaintiff may establish a defendant’s knowledge of the patents based on the filing of a previous complaint (including a superseded complaint or a complaint against a related entity), and whether that knowledge can support pre‑filing liability.
- The court considered conflicting district-court approaches and whether knowledge gleaned from a complaint can be applied prospectively only or can be bootstrapped to pre‑filing conduct.
- The court denied Allscripts’ motion in full, holding that notice via a prior complaint can establish knowledge but only for post‑filing conduct (with limited potential prefiling inference tied to Allscripts’ acquisition/integration facts).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether filing a prior complaint can establish defendant's knowledge for indirect infringement | Filing earlier complaint(s) that named or put defendant on notice establishes knowledge when defendant was added; knowledge assessed when defendant was added | Central Dist. Cal. precedent bars relying on the complaint itself or prior complaints in same suit to plead presuit knowledge | Court: Prior complaint can establish knowledge but only for defendant's post‑filing (post‑notice) conduct; cannot bootstrap to prefiling conduct absent other facts |
| Whether willful infringement may be based on post‑filing knowledge | Post‑filing knowledge (from complaint) supports willfulness for conduct after notice; Seagate does not categorically bar post‑filing willfulness relief | Seagate prevents basing willful‑infringement claims solely on post‑filing conduct absent a preliminary injunction effort | Court: Willfulness adequately pleaded as of dates plaintiff gave notice (May 17, 2013 for 466; Sept. 23, 2013 for 883); post‑filing conduct can support willfulness |
| Specific intent to induce infringement (knowledge that induced acts infringe) | Instructions on Allscripts’ websites and materials show it taught infringing uses and knew those uses infringed | Alleged materials show substantial non‑infringing uses; at most show awareness of user behavior, not intent to induce infringement | Court: Pleading sufficient — specific intent and requisite knowledge alleged as of the dates of notice (May 17, 2013 and Sept. 23, 2013) |
| Contributory infringement: lack of substantial non‑infringing uses | Products were specifically designed to enable secure collection/access of health records and prescriptions and thus lack substantial non‑infringing uses | Website and product functionality demonstrate many non‑infringing uses; complaint’s own allegations show non‑infringing uses | Court: Plaintiff's factual allegations suffice at pleading stage; claim survives dismissal pending later proof |
Key Cases Cited
- Global‑Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (knowledge requirement for induced infringement)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) (knowledge requirement for contributory infringement)
- In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (standard for willful infringement; caution re: claims based solely on post‑filing conduct)
- DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) (specific intent required for induced infringement)
- i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (instructions to users can show inducement)
- In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012) (pleading standard for lack of substantial non‑infringing uses)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (rejecting argument that each product is a noninfringing use of the other patent)
- Knorr‑Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (purpose of enhanced damages to punish deliberate infringement)