990 F. Supp. 2d 50
D. Mass.2014Background
- Zond sued multiple semiconductor companies (Fujitsu Ltd., Fujitsu USA, and TSMC entities) for infringement of process patents; related suits on same patents are pending in the district.
- Defendants moved to dismiss Zond’s second amended complaint; court heard motions and dismissed willful-infringement claims without prejudice but otherwise denied TSMC’s motion and took Fujitsu’s motion under advisement.
- Zond pleads direct infringement under 35 U.S.C. §271(g), induced infringement under §271(b), and alleges both pre-filing and post-filing knowledge and intent by Fujitsu.
- Fujitsu argued (1) impermissible group pleading as to Fujitsu Ltd./Fujitsu USA, (2) direct-infringement pleading insufficient under Twombly/Iqbal, and (3) induced-infringement insufficient because knowledge and intent were not adequately alleged.
- The court applied Form 18 as the proper pleading standard for direct infringement, found Zond met Form 18 for §271(g) claims, rejected dismissal for group pleading, and analyzed induced infringement knowledge (pre- vs post-filing).
- Court held that pre-filing knowledge is required to plead induced infringement at filing; Zond failed to allege pre-filing knowledge of TSMC’s infringing use by Fujitsu and that pre-filing induced-infringement claim is dismissed, but post-filing induced-infringement claim survives given the amended complaint.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Group pleading | Zond treats Fujitsu entities collectively but gives adequate notice | Fujitsu: undifferentiated allegations fail Rule 8(a) notice | Denied dismissal; grouping permissible here because allegations consistently applied and plausible |
| Direct infringement standard | Form 18 suffices for direct §271(g) claim | Twombly/Iqbal require more; Form 18 is outdated | Form 18 governs; Zond met Form 18 for §271(g); direct infringement claim survives |
| Induced infringement — knowledge timing | Zond alleges both pre- and post-filing knowledge; post-filing knowledge may suffice | Fujitsu: plaintiff must plead pre-filing knowledge and specific intent | Court requires pre-filing knowledge at time of filing; pre-filing induced claim dismissed for lack of pleaded knowledge of TSMC’s use; post-filing claim may proceed after amendment |
| Induced infringement — intent/particularity | Zond: intent can be inferred from marketing/sales and that products have no substantial non-infringing uses | Fujitsu: allegations are conclusory and speculative | Post-filing intent and inducement plausibly inferred at motion-to-dismiss stage; post-filing inducement claim survives |
Key Cases Cited
- Educadores Puertorriqueños en Acción v. Hernández, 367 F.3d 61 (1st Cir. 2004) (pleading must give notice of who did what, when, where, why)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (plausibility pleading standard)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must allege sufficient facts to state a plausible claim)
- Leatherman v. Tarrant Cnty. Narcotics Intelligence & Coordination Unit, 507 U.S. 163 (1993) (courts should not amend rules by judicial interpretation)
- K-Tech Telecomm. v. Time Warner Cable, 714 F.3d 1277 (Fed. Cir. 2013) (application of Form 18 and pleading standards in patent cases)
- In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012) (Form 18 pleading guidance for direct patent infringement)
- Vita-Mix Corp. v. Basic Holding, 581 F.3d 1317 (Fed. Cir. 2009) (elements for induced infringement and inference of intent)
- DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (inducement requires knowledge and specific intent)
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (intent to induce may be inferred from manufacture/import of products with no substantial non-infringing use)