MEMORANDUM & ORDER
Plaintiff Carson Optical Inc. (“plaintiff’) brought this patent infringement action against online marketplace eBay Inc. (“defendant”), claiming that defendant has induced infringement by permitting items that allegedly infringe plaintiffs patents to be sold on defendant’s website. Plaintiff also asserts an unfair competition claim under New York state law. Defendant has moved to dismiss the operative Amended Complaint for failure to state a claim. For
BACKGROUND
The following facts derive from the Amended Complaint. (EOF No. 15, Amended Complaint (“Compl.”).) All well-pleaded allegations are taken as true, and all reasonable inferences are drawn in favor of the plaintiff, for purposes of deciding the instant motion to dismiss. See Roth v. Jennings,
I. The Parties
Plaintiff markets and sells optical products, and owns, by assignment, the two patents at issue in this action. (Compl. at 1-2.
Defendant is an e-commerce company that runs one of the “world’s largest online marketplaces.” (Id.) Plaintiff does not allege that defendant ever takes possession of or sells the items offered for sale on its website. Instead, defendant’s website provides a medium to connect individual buyers and sellers, and defendant provides a wide range of service that facilitate the sale and purchase of items on its website (Id. at 3-6.) For example, defendant offers vendors a service called “eBay University,” which furnishes vendors with tips on how to improve sales. (Id. at 4.) Additionally, defendant “provides vendors with techniques and means to ensure that vendors receive payment” for items sold on its website. (Id. at 6.) Defendant generates revenue with a “complex system of fees for services, listing product features, and a Final Value Fee for sales proceeds received by sellers.” (Id. at 3.) At any given time, 800 million items are listed on defendant’s website, which has an annual revenue exceeding $17.9 billion. (Id.)
Defendant also maintains the Verified Rights Owner Program (“VeRO”), which permits “intellectual property owners [to] easily report listings that infringe their rights.” (Id. at 6-7.) VeRO procedures allow aggrieved intellectual property owners to file online complaint forms, referred to as Notice of Claimed Infringement (or “NOCI”) forms. (Id.)
II. The Instant Dispute
Plaintiff alleges that at least as early as February 7, 2014, after discovering that numerous items available on defendant’s website infringed one or more claims of the ’729 and ’601 patents, plaintiff followed defendant’s VeRO program procedures by submitting NOCI forms.
On June 29, 2015, plaintiff commenced this action against defendant, asserting three claims. (ECF No. 1.) Plaintiff subsequently amended its complaint. (Compl.) First, plaintiff alleges that defendant induced infringement of the ’729 patent. {Id. at 8-16.) Second, plaintiff alleges that defendant induced infringement of the ’601 patent. {Id. at 16-24.) Third, plaintiff alleges that defendant’s actions constitute unfair competition under New York law. {Id. at 25-26.)
Defendant subsequently moved to dismiss the complaint and filed a memorandum in support of its motion. (ECF No. 17, Ex. 9, Defendant’s Memorandum in Support of Defendant’s Motion to Dismiss (“Def. Mem.”).) Plaintiff filed a memorandum in opposition to defendant’s motion, to which defendant replied. (ECF No. 17, Ex. 10, Plaintiffs Memorandum in Opposition to Defendant’s Motion to Dismiss (“PI. Opp’n”); ECF No. 17, Ex. 11, Defendant’s Reply in Support of Defendant’s Motion to Dismiss (“Def. Reply”).)
LEGAL STANDARD
As noted earlier, on a motion to dismiss all well-pleaded factual allegations in the complaint are taken as true and all inferences are drawn in the plaintiffs favor. See Mills v. Polar Molecular Corp.,
Although Federal Circuit law governs much of this action, the Federal Circuit applies regional circuit law in evaluating whether a complaint states a claim upon which relief can be granted. See In re Bill of Lading Transmission & Processing Sys. Patent Litig.,
DISCUSSION
I. Inducement
The Federal Patent Act, as relevant in this action, provides for two forms of liability: direct infringement and inducement to infringe. See 35 U.S.C. § 271 (“§ 271”). Plaintiff does not allege that defendant is liable for direct infringement, which is governed by .§ 271(a).
To state a claim for induced infringement, a plaintiff must plausibly allege that the defendant: (1) had knowledge of the patent-in-suit; (2) knew the induced acts were infringing; and (3) specifically intended to encourage another’s infringement. See id. (“[I]ndueed infringement ... requires knowledge of the patent in suit and knowledge of patent infringement.”); Global-Tech Appliances, Inc. v. SEB S.A.,
The Global-Tech Court held that the knowledge requirement for liability under § 271(b) could be met by a finding of willful blindness. See
In evaluating intent, “direct evidence is not required; rather, circumstantial evidence may suffice.” MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp.,
Because plaintiffs claims regarding inducing infringement are functionally identical for both the ’729 and ’601 patents (compare Compl. at 8-16, with id. at 16-
A. Allegations of Defendant’s Knowledge of the Patents-in-Suit
Defendant does not appear to dispute that it had knowledge of the patents-in-suit at least as early as February 7, 2014, the date defendant claims it received plaintiffs first NOCI pursuant to defendant’s VeRO program. (See id. at 8 (“Since at least February 7, 2014, eBay has been on notice that ... Carson was the owner of the 729 patent .... ”); id. at 16 (“Since at least February 7, 2014, eBay has been on notice that ... Carson was the owner of the 601 patent.”); Def. Mem. at 5-6 & n. 3.) Moreover, even absent defendant’s NOCI procedures, the filing of a federal complaint identifying the patents-in-suit satisfies the requirement that a plaintiff plead a defendant’s knowledge of the patents-in-suit. See Smartwater, Ltd. v. Applied DNA Seis., Inc., No. 12-CV-5731,
B. Allegations of Underlying Direct Infringement
Neither does defendant dispute that plaintiff has adequately alleged underlying direct infringement by non-party eBay merchants of the two relevant patents, as required to state a claim for inducing infringement. See Bill of Lading,
Defendant primarily argues that plaintiff has insufficiently pled: (1) that defendant knew the induced acts were infringing and (2) that defendant possessed specific intent to encourage another’s infringement. The court addresses these arguments in turn.
C.Allegations of Defendant’s Knowledge That the Induced Acts Constituted Infringement
To state a claim for inducing infringement, plaintiff must plausibly allege that the defendant knew that the induced acts were infringing. See Commil,
i. Actual Knowledge
Defendant first argues insufficient facts were pled to state a claim that defendant had actual knowledge that the induced acts constituted infringement. The court agrees.
Plaintiffs generalized allegation that defendant actually knew that the induced acts constituted infringement is fundamentally flawed because it is inconsistent with the specific factual allegations supporting plaintiffs contention that defendant was willfully blind. Plaintiff alleges that defendant had actual knowledge (e.g., id.) but simultaneously alleges with a notable degree of specificity that defendant “explicitly refused to evaluate the issues of patent infringement presented” by plaintiff. (Id. (emphasis added); see also id. at 15 (allegation that defendant “[k]knowingly refusfed] to even evaluate whether the listings or infringing products are inappropriate under its own published policies”); id. at 23-24 (same).) Although a defendant is permitted to plead alternative theories of liability, “[w]here plaintiffs own pleadings are internally inconsistent, a court is neither obligated to reconcile nor accept the contradictory allegations in the pleadings as true in deciding a motion to dismiss.” See U.S. Bank Nat’l Ass’n v. Bank of Am., N.A., No. 12-CV-4873,
Any generalized allegation that defendant had actual knowledge that the induced acts constituted infringement is undercut by plaintiffs far more specific allegation that defendant explicitly refused to evaluate plaintiffs claims of patent infringement by merchants selling products on eBay. Accordingly, plaintiff has inadequately pled that defendant had actual knowledge that the induced acts constituted infringement.
ii. Willful Blindness
On the other hand, plaintiffs induced infringement claims may still survive if plaintiff can adequately plead that defendant was willfully blind. See. Global-Tech, 563 U.S, at 768,
(a) Subjective Belief of a High Probability a Fact Exists
As to the first requirement, accepting the allegations in the complaint as true, plaintiff has sufficiently alleged that defendant subjectively believed there was a high probability of infringement, at least by the time the complaint in this action was filed. The complaint attached as exhibits the patents themselves (Compl, Exs. A-B) and provided detailed illustrations and photographs of both the patented inventions and certain allegedly infringing items. (Id. Exs. A-C; see also id. at 9-10, 12, 18-19, 21.) The complaint also provided thorough descriptions of both patents (id. at 2-3, 8, 11, 16, 19-20) and a long list of the allegedly infringing products. (Id. at 8-10, 17-18). The complaint also alleged that, before filing the complaint, plaintiff followed defendant’s procedures for providing notice of allegedly infringing products and engaged in more informal communication with defendant regarding the allegedly infringing products. (Id. at 7-8,16.)
At the pleading stage, the court concludes that the above-described allegations regarding subjective knowledge of a high probability of infringement are sufficient. In Alibaba.com Hong Kong L.T.D. v. P.S. Products, Inc., No. 10-CV-4457,
The plaintiff brought direct infringement and induced infringement claims against Alibaba. Id. at *1, 3-4. The court held that the plaintiffs induced infringement claims could survive summary judgment because
[t]here is a genuine factual dispute as to whether Alibaba took deliberate actions to avoid learning of infringement. The record shows that [plaintiff] sent Aliba-ba a notice of infringement in January 2010. It is unclear when Alibaba took down those allegedly infringing items. Construing the facts in a light favorable to [plaintiff], a reasonable jury could find that Alibaba induced infringement by deliberately maintaining the allegedly infringing item on its website for an unduly long period.
Id. at *3.
The facts alleged in the complaint here are similar to the facts in Alibaba. Like
Defendant first argues that because it never takes possession of any of the approximately 800 million items offered on eBay, including the accused items, and because defendant is not skilled in the relevant art, defendant “has no basis to form a subjective belief of any sort about the likelihood of the infringing nature of the accused products.” (Def. Mem. at 18-19.) If accepted, defendant’s argument that possession of an allegedly infringing item is necessary for indirect infringement liability to attach would effectively render defendant immune from liability for induced infringement merely because it never takes possession of any of the products available on its website. The court is reluctant to adopt such an application of § 271(b). See 5-17 Donald S. Chisum, Chisum On Patents § 17.04[4] (2016) (“The Section 271(b) prohibition on active inducement of infringement covers a wide variety of acts.”); Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
Defendant next contends that it is not a person of ordinary skill in the relevant art. The court recognizes that in certain circumstances, where the- “technology is simple and easily understandable, the level of ordinary skill in the art [can be] that of an ordinary layman of average intelligence.” Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
Here, plaintiff initially notified defendant of its patents and its “belief’ that vendors in the eBay marketplace offered infringing products when it submitted NOCI forms under eBay’s VeRO program. The letters are dated December 30, 2013 and May 19, 2015. (ECF No. 17, Exs. 2-3.) Plaintiff also notified defendant of the alleged infringement (and provided copies of the patents) by serving its complaints in this action. Thus, the court finds that plaintiff has sufficiently alleged that defendant subjectively believed there was a high probability that plaintiffs patents were infringed by the items listed on defendant’s online marketplace. See Ill. Tool Works, Inc. v. MOC Prods. Co.,
(b) Deliberate Actions to Avoid Learning of a Fact
As to the second requirement for willful blindness—deliberate actions taken to avoid learning of a fact—plaintiff has alleged that defendant actively refused (despite plaintiffs requests) adequately to evaluate plaintiffs complaints of patent infringement. According to the complaint, defendant publicly proclaims that it does not “allow replicas, counterfeit items, or unauthorized copies to be listed” and ensures through its VeRO program that “intellectual property owners can easily report listings that inflinge their rights.” (Compl. at 6.) Plaintiff alleges, however, that defendant:
• “has explicitly stated that it will not even evaluate the issues of patent infringement presented by [plaintiff]” (Compl. at 7);
• “[kjknowingly refus[ed] to even evaluate whether the listings of infringing products are inappropriate under its own published policies ...” (id. at 15, 23-24); and
• “[k]knowingly refus[ed] to even evaluate [plaintiffs] notices and complaints of patent infringement.” (Id. at 15, 23-24.)
Ignoring accusations of patent infringement after affirmatively vowing to look into such allegations can suggest willful infringement. See Info-Hold,
Further, plaintiff alleges that even after notifying defendant that infringing products were available for sale on its website, defendant “[k]nowingly refus[ed] to remove or cancel listings of infringing products ... thereby ... encouraging, aiding, abetting and/or inducing infringing sales.” (Compl. at 15; see also id. (alleging that
Before turning to the adequacy of plaintiffs allegations regarding specific intent, however, the court must resolve a significant question raised by the parties: whether defendant’s failure to obtain the advice of counsel is relevant to whether defendant had the requisite knowledge for liability under § 271(b).
iii. Advice of Counsel
The parties dispute the applicability of 35 U.S.C. § 298 to the instant proceedings. Section 298 provides that
[t]he failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.
The provision, if applicable, would therefore preclude plaintiff from arguing that defendant’s failure to obtain the advice of counsel is germane to whether defendant induced infringement. The parties’ dispute is not about the substantive language of § 298, but instead concerns whether the recently enacted provision is even applicable to the instant action. A brief legislative history regarding the passage and subsequent amendment of § 298 resolves the dispute.
Before § 298 was enacted, evidence regarding a defendant’s failure to obtain counsel regarding asserted patents was admissible at trial. See Broadcom Corp. v. Qualcomm Inc.,
When Congress passed the AIA, § 298 lacked a specific effective date. Its effective date was therefore governed by the
Courts accordingly refused to apply § 298 where the patents-in-suit were issued before September 16, 2012. See Suprema, Inc. v. Int’l Trade Comm’n,
In response to various concerns about the AIA including the apprehensions discussed above regarding the effective date of § 298, see Novartis AG v. Lee,
Accordingly, because this is a “civil action[ ] commenced on or after” January 14, 2013, § 298 is applicable and plaintiff may not rely on defendant’s failure to obtain a legal opinion regarding infringement to establish inducement, notwithstanding that the patents-in-suit were issued in 2000 (the ’729 patent) and 2001 (the ’601 patent). (Compl,, Exs. A-B.) Plaintiffs reliance on Suprema (PI. Opp’n at 13-14 & n. 2) for the proposition that § 298 is inapplicable here is misplaced. As noted above, Suprema declined to apply § 298 to patents issued in 2007 because “the ALA only applies to patents issued on or after September 16, 2012.”
Second, an International Trade Commission proceeding is not a “civil action” within the meaning of Pub. L. No. 112-274, § 1(a). See SSIH Equip. S.A. v. U.S. Int’l Trade Comm’n,
Accordingly, the court finds that § 298 applies to the instant action and plaintiff may not rely on defendant’s failure to seek the advice of counsel to establish infringement.
The court turns next to the final pleading requirement under § 271(b), a plausible allegation that the defendant specifically intended to encourage another’s infringement. See DSU Med. Corp. v. JMS Co.,
Here, assuming the truth of the allegations in plaintiffs complaint, the complaint has adequately alleged defendant’s specific intent to infringe. As discussed above, the complaint provides defendant with highly detailed descriptions and depictions of the patents-in-suit and also the allegedly infringing items. (Compl. at 2-3, 8-12, 16, 18-21; see also id. Exs. AC.) Further, the complaint alleges that defendant, despite receiving notice of the alleged infringement (id. at 7-8,16), nevertheless continued (and apparently continues) to sell infringing items. (Id. at 8, 15-16, 23.) At this early stage of the litigation, the above-described allegations are sufficient to sustain plaintiffs claims. See Ali-baba,
Defendant does not discuss Alibaba, but argues that Paone and Conair are inapplicable for two reasons. First, defendant argues that Paone and Conair improperly rely on Global-Tech rather than Commil. (Def. Reply at 3-4.) The standard for inducing infringement articulated by both cases, however, is the same. Indeed, the Commil Court explicitly confirmed that it was merely “reaffirming] what the Court held in Global-Tech.” Commil,
Second, defendant argues that the defendants in Paone and Conair (and similar cases cited by plaintiff) “all made and sold products that were allegedly used or combined in a directly infringing manner” and therefore “had knowledge of how their accused products, systems, or methods worked and were made.” (Def. Reply at 4.) By contrast, defendant “does not make, use, sell, or even take possession of the accused products.” (Id.) Defendant cites no precedent holding that making, using, or selling products accused of infringement is a requirement for indirect infringement. Making, using, or selling infringing products, in fact, would lead to liability for direct infringement. See § 271(a) (“[W]ho-ever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” (emphasis added)). As for defendant’s argument regarding possession, defendant cites no authority (and the court can find none) establishing that possession of an allegedly infringing product is a prerequisite to liability for inducing infringement.
E. Defendant’s Further Objections
Defendant objects that it is practically impossible for it to police patent infringement, given the 800 million items available on its website at any given time. (Def. Reply at 7.) Defendant argues that “[p]roof of judicially-ordered injunctive relief or adjudication of patent infringement against a listed product is necessary because, otherwise, eBay would be forced into the untenable position of having to adjudicate patent infringement claims in the abstract against countless products.” (Def. Mem. at 5.) Defendant further points to the Second Circuit’s decision in Tiffany (NJ) Inc. v. eBay Inc.,
The court recognizes defendant’s legitimate concerns. At this stage of the proceedings, however, and granting all reasonable inferences in plaintiffs favor, the court is satisfied that plaintiff has pled sufficient facts to survive a motion to dismiss. See Bill of Lading,
Further, in the only factually analogous case—which, inexplicably, neither party cites or discusses—the Alibaba court refused to grant summary judgment to on
11. Unfair Competition Claim
Plaintiff additionally brings an unfair competition claim
Under the Supremacy Clause of the United States Constitution, U.S. Const, art. VI, cl. 2, “state law that conflicts with federal law is without effect.” Ultra-Precision Mfg., Ltd. v. Ford Motor Co.,
“Federal Circuit law governs whether federal patent law preempts a state law claim.” Sorias v. Nat’l Cellular USA, Inc.,
[i]f a plaintiff bases its tort action on conduct that is protected or governed by federal patent law, then the plaintiff may not invoke the state law remedy, which must be preempted for conflict with federal patent law. Conversely, if the conduct is not so protected or governed, then the remedy is not preempted. This approach, which considers whether a state law tort, ‘as-applied,’ conflicts with federal patent law, is consistent with that employed by the Supreme Court in cases involving preemption of state unfair competition law.
Id. at 1336. The federal patent law will not preempt a state law cause of action such as unfair competition if the state law claims: (1) “include additional elements not found in the federal patent law cause of action” and (2) “are not an impermissible attempt to offer patent-like protection to subject matter addressed by federal law.” Rodime PLC v. Seagate Tech., Inc.,
Two recent patent cases in this district illustrate preemption principles in the context of New York unfair competition arid patent claims. In Soñas,
Similarly, in a case involving the same plaintiff litigating this action, a court found that federal patent law preempted a New York unfair competition law claim. See Carson,
A. Plaintiff’s Allegation Regarding Defendant's “Bad Faith and Willful Inducement of Infringement”
Here, plaintiffs first allegation regarding unfair competition is that defendant’s “acts of unfair methods of competition and/or unfair or deceptive trade practices include the bad faith and willful inducement of infringement of the 729 and 601 Patents in such a manner as to directly and unfairly compete with [plaintiffs] business.” (Compl. at 25.) As an initial matter, plaintiffs allegation is far less detailed than the comparatively fulsome allegations regarding unfair competition in Carson, which were nevertheless held to be preempted by federal patent law. See
Plaintiff appears to contend that its con-clusory allegations regarding bad faith remove its claim from the reach of federal preemption. (PI. Opp’n at 18, 20; see also Compl. at 25.) An identical argument was rejected in Carson. See
Finally, plaintiffs reliance on Rodime,
B. Plaintiff’s Allegation Regarding Defendant’s VeRO Program
The thrust of plaintiffs second argument regarding unfair competition is that defendant misrepresented the reach of its intellectual property protection program VeRO. According to plaintiff, defendant’s website states: “We’re committed to protecting the intellectual property rights of third parties .... We created [VeRO] so that intellectual property owners can easily report listings that infringe their rights.” (Compl. 6; see also id. (allegation that defendant’s website states: “[w]e don’t allow replicas, counterfeit items, or unauthorized copies to be listed”).)
Even if plaintiffs claim arising out of defendant’s non-adherence to its VeRO policy were not preempted, the court concludes that the complaint fails to state a claim for unfair competition under New York law. See Khan ex rel. Hague v. Am. Airlines, Inc., No. 08-CV-5246,
Recently, the New York Court of Appeals explained that it has “long recognized two theories of common-law unfair competition: palming off and misappropriation.” ITC Ltd. v. Punchgini, Inc.,
Plaintiffs theory that defendant is liable for unfair competition because of defendant’s purported non-adherence to its own VeRO program (as advertised on one part of defendant’s website) cannot be shoehorned into either of the two broad theories of unfair competition recognized by the New York Court of Appeals in Pun-chgini. First, the VeRO-related allegations do not state a claim for palming off. “Essentially, palming off occurs when A promotes A’s products under B’s name and its corollary, reverse palming off, occurs when A promotes B’s products under A’s name. Marvullo v. Gruner & Jakr AG & Co., No. 98-CV-5000,
Neither does plaintiff adequately plead that defendant “misappropriated the plaintiffs labors, skills, expenditures, or good will,” Barbagallo v. Marcum LLP,
Even assuming, as the court must, that defendant, in advertising its VeRO program, “buried” the fact that it would only remove items from its website with a court or ITC order of infringement, such an allegation does not state a claim for unfair competition under the misappropriation theory. See Simple.com, Inc.,
The inadequacy of plaintiffs claim is further underscored by the fact that plaintiff cites only a single case to support its theory, Roy Export Co.,
Accordingly, the court concludes that plaintiffs unfair competition claims are preempted and, even if not preempted, fail to state a claim.
CONCLUSION
For the foregoing reasons, defendant’s motion to dismiss is GRANTED in part and DENIED in part. Plaintiff has plausibly alleged that defendant induced infringement of the ’729 patent and the ’601 patent. Plaintiff has not, however, plausibly alleged an unfair competition claim. Plaintiffs unfair competition claim is therefore dismissed with prejudice.
SO ORDERED.
Notes
. Because plaintiff has mistakenly repeated some of the paragraph numbers in the complaint, the court refers to the page numbers in the complaint rather than to individual paragraphs.
. In support of its motion to dismiss, defendant attached NOCI letters referred to by plaintiff in its complaint. They are dated December 30, 2013 and May 19, 2015. (ECF No. 17, Exs. 2-3.)
. Section 271(a) provides: "Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells
. See Michael L, Rustad et. al, Destined to Collide? Social Media Contracts in the U.S. and China, 37 U. Pa. J. Int’l L. 647, 671 (2015) (referring to Alibaba as "China's eBay equivalent”); see also Esther A. Zuccaro, Gucci v. Alibaba: A Balanced Approach to Secondary Liability for E-Commerce Platforms, 17 N.C.J.L. & Tech. On. 144, 149 (2016) ("Aliba-ba offers services on its platforms conceptualized as a mix of eBay’s user-generated listings and Amazon's wide product availability ...." (citations omitted)).
. The Alibaba court also refused to grant summary judgment against the plaintiff’s direct inducement claims because there was "a fac
. The Alibaba court did not explicitly address whether the online marketplace defendant subjectively believed that there was a high probability of infringement based solely on allegations that the plaintiff sent the defendant a letter alleging infringement and included copies of the patent in the letter. Id. at *2-3. Instead, the Alibaba court found a genuine factual dispute as to whether Alibaba took deliberate acts to avoid learning of infringement. Id.
. In the distinct design patent context, the Federal Circuit has permitted courts evaluating infringement allegations to employ a side-by-side analysis between a plaintiff’s patent and photographs of the defendant’s allegedly infringing design. See Anderson v. Kimberly-Clark Corp., 570 Fed.Appx, 927, 932 (Fed.Cir.2014) ("We also find no error in the court's consideration of the photographs of the accused ... products_Determining infringement of a design patent requires comparing the drawings of the patented design to the appearance of the accused products, and the photographs are visual representations of those products.”),
. Then-Senator John Kyi stated during a hearing that permitting "adverse inferences from a failure to procure an opinion or waive privilege ... feeds the cottage industry of providing such opinions—an industry that is founded on an unhealthy relationship between clients and counsel and which amounts to a deadweight loss to the patent system.” 157 Cong. Rec. S1374 (daily ed. Mar. 8, 2011) (statement of Sen. Kyi).
. The view that the amendments overrode the prior effective date of § 298 is further underscored by the very limited legislative history regarding § 298. For example, Representative John Conyers explained that H.R. 6621, 112th Cong. (2011-2012), which in relevant part mirrors the final Leahy-Smith America Invents Technical Corrections, "clarifies that the Advice of Counsel section applies to civil actions commenced on or after the date of this legislation’s enactment.” 158 Cong. Rec. H6843 (daily ed. Dec. 18, 2012) (statement of Rep. Conyers). Rep. Conyers noted that the amendment addressing § 298 was intended to simplify problems that arose regarding the
. It is not clear whether § 298 applies to ITC proceedings. For example, § 298 describes the consequences of a failure to present advice of counsel to "the court or juiy” (there are no juries in ITC proceedings) and Pub. L. No. 112-274’s provision that § 298 "shall apply to any civil action commenced on or after the date of the enactment of this Act” could be read to indicate that § 298 only applies to civil actions (and therefore not to ITC proceedings, see SSIH Equip.,
, To the extent, however, that defendant may rely on the advice of counsel to establish that it did not induce infringement, at least one court has held that § 298’s protections would not apply. See Ultratec, Inc. v. Sorenson Commc’ns, Inc., No. 13-CV-346,
. In the Amended Complaint, plaintiff styles the relevant count “UNFAIR AND DECEPTIVE TRADE PRACTICES.” (Compl. at 25.) To the extent the Amended Complaint could have been read to allege a violation of N.Y. Gen. Bus. Law § 349, which governs deceptive trade practice claims in New York, plaintiff has abandoned that claim. In its opposition brief, plaintiff explains that it brings only an unfair competition claim under New York common law, (See PL Opp’n at 20 (characterizing claim as one for "unfair competition under the common law of New York”).)
. Plaintiff also cites in its opposition brief statements from defendant’s website that