When Must Joint Patent Infringement Be Plead?

After Yahoo argued that the plaintiff should be required to meet the standard for pleading divided, or joint, patent infringement, a Delaware magistrate judge has recommended denying Yahoo’s motion to dismiss the plaintiff’s complaint for direct patent infringement. Pragmatus AV, LLC v. Yahoo! Inc., No. 11-902-LPS-CJB (D. Del. Nov. 13, 2012). The court believed that it was possible that claim construction would determine that Yahoo could be the actor of certain claimed steps despite Yahoo’s assertion that the steps could only be carried out by a third party. However, the magistrate judge did recommend dismissing the plaintiff’s complaint insofar as it plead induced or contributory infringement.

The plaintiff alleged that the Yahoo! Messenger product infringed claims of its U.S Patent Nos. 6,237,025, 6,351,762, 5,854,893, 7,185,054, and 5,896,500. The patents were all directed to collaborative communications, i.e., audio and/or video conferencing.

The court first noted that, while the law of the regional circuit applies to motions to dismiss, it would follow Federal Circuit cases to the extent the reasoning of such cases was persuasive.

Turning to the standard for direct infringement, the court cited Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012), for the proposition that “[f]or a party to be held liable for direct patent infringement under 35 U.S.C. § 271(a), that party must commit all the acts necessary to infringe the patent, either personally or vicariously.” Further, a claim of “undivided” direct patent infringement was sufficiently plead if it matched Form 18 of the Federal Rules of Civil Procedure. Here, Yahoo alleged that the doctrine of divided infringement must be plead, meaning that the “plaintiff must also plead facts sufficient to allow a reasonable inference that one party exercises the requisite ‘direction or control,’ such that performance of every step is attributable to the controlling party.”

Thus, this case was one “where the parties do not agree whether the claims at issue can plausibly be read to allow for one person or entity that performs all of the steps of a claimed method.” The case law suggests that, at the pleading stage, such cases should be approached by giving the claims their broadest reasonable construction. If the answer to the question of whether multiple entities are required to perform a claim is not clear, then a motion to dismiss should be denied, and the question deferred until claim construction.

The court distinguished this case from Desenberg v. Google, Inc., 392 Fed. App’x 868 (Fed. Cir. 2010). There, the Federal Circuit had agreed with the District Court that “Google could not be a direct infringer because the method clearly required a user’s participation in a manner not directed or controlled by Google.”

Here, the court looked at a number of steps from a number of claims, and determined in each case that the steps could be plausibly read to recite conduct that could be performed by Yahoo! Messenger. For example, “selecting one or more participants” for a call, or “initiating a call from the first participant to the second participant,” could be performed by a user, or could be performed by Yahoo! Messenger. Accordingly, the magistrate judge recommended denying Yahoo’s motion to dismiss the plaintiff’s claims of direct infringement.

However, the magistrate judge did recommend dismissing the plaintiff’s indirect patent infringement claims. A pleading of induced infringement here required a pleading that Yahoo knew that its user’s actions could constitute infringement. The plaintiff had plead only that it had provided Yahoo with written notice of its infringement, but provided no details as to what this notice included, or how it demonstrated Yahoo’s alleged knowledge of its user’s infringement. Likewise, the plaintiff failed to set forth that Yahoo had the requisite knowledge that its product had no substantial non-infringing use, such as would be necessary to plead contributory infringement.

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