Netgear Inc. v. Ruckus Wireless Inc.
MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 3/28/2012. (nmf)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
RUCKUS WIRELESS, INC.,
) Civ. No. 10-999-SLR
Jack B. Blumenfeld, Esquire and Rodger D. Smith II, Esquire of Morris, Nichols, Arsht &
Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: Eric R.
Lamison, Esquire, Ryan J. Casamiquela, Esquire and Steven C. Cherny, Esquire of
Kirkland & Ellis LLP.
George Pazuniak, Esquire of Pazuniak Law Office LLC, Wilmington, Delaware.
Counsel for Defendants. Of Counsel: Colby B. Springer, Esquire and Shane E.
Olafson, Esquire of Lewis and Roca LLP.
Dated: March 28, 2012
Plaintiff Netgear Inc. ("plaintiff') filed the present patent litigation against Ruckus
Wireless Inc. ("defendant") on November 19, 201 0. (D .I. 1) Plaintiff filed an amended
complaint on July 29, 2011, alleging infringement of four patents: U.S. Patent Nos.
5,812,531 ("the '531 patent"), 6,621,454 ("the '454 patent"), 7,263,143 ("the '143
patent"), and 5,507,035 ("the '035 patent") (collectively, the "patents-in-suit"). (D.I. 28)
Defendant moved to dismiss counts I through IV of the amended complaint under
Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. 1 (D. I. 30) That
motion is currently before the court. The court has jurisdiction over this matter pursuant
to 28 U.S.C. §§ 1331 and 1338(a). For the reasons that follow, defendant's motion to
dismiss is denied.
Plaintiff is a Delaware corporation with a principal place of business in San Jose,
California. (D.I. 28
2) Defendant is a Delaware corporation with a principal place
of business in Sunnyvale, California. (/d.
3) Defendant is in the business of
manufacturing and distributing communications devices. (/d.)
Plaintiff is the owner of the patents-in-suit. (D.I. 28) The '531 patent issued
Piaintiff's amended complaint is for patent infringement. Defendant's motion to
"Pursuant to Federal Rule of Civil Procedure 12(b)(6), Defendant Ruckus
Wireless, Inc. hereby moves to dismiss the Amended Complaint filed by Plaintiff
NETGEAR, Inc., and specifically and alternatively respectfully requests that the
Court dismiss Plaintiff's claims of direct infringement, induced and contributory
infringement, and willful infringement." (D.I. 30)
September 22, 1998 and is entitled "Method and Apparatus for Bridging Wireless LAN
to a Wired LAN." (/d. at ex. 1) The '454 patent issued September 16, 2003 and is
entitled "Adaptive Beam Pattern Antennas System and Method for Interference
Mitigation in Point to Multipoint RF Data Transmissions." (!d. at ex. 2) The '143 patent
issued August 28, 2007 and is entitled "System and Method for Statistically Directing
Automatic Gain Control." (/d. at ex. 3) The '035 patent issued April 9, 1996 and is
entitled "Diversity Transmission Strategy in Mobile/Indoor Cellula Radio
Communications." (/d. at ex. 4)
According to the amended complaint, defendant infringes the patents-in-suit by
"making, using, selling, and/or offering for sale in the United States and/or importing
into the United States" various products "including, without limitation, ZoneFiex
products." (/d. at 114) The complaint alleges that defendant induces and/or contributes
to infringement by third parties, and willfully infringes the patents-in-suit. (/d. at 111129,
32) By its present motion, defendant argues that plaintiff's amended complaint: (1)
lacks basic factual support; (2) fails to comply with Form 18; (3) fails to state a claim for
indirect infringement; and (4) fails to sufficiently allege willful infringement. (D.I. 31)
Ill. STANDARD OF REVIEW
In reviewing a motion filed under Federal Rule of Civil Procedure 12(b)(6), the
court must accept the factual allegations of the non-moving party as true and draw all
reasonable inferences in its favor. See Erickson v. Pardus, 551 U.S. 89, 94 (2007);
Christopher v. Harbury, 536 U.S. 403, 406 (2002). A complaint must contain "a short
and plain statement of the claim showing that the pleader is entitled to relief, in order to
give the defendant fair notice of what the ... claim is and the grounds upon which it
rests." Bell At/. Corp. v. Twombly, 550 U.S. 544, 545 (2007) (interpreting Fed. R. Civ.
P. 8(a)) (internal quotations omitted). A complaint does not need detailed factual
allegations; however, "a plaintiff's obligation to provide the 'grounds' of his entitle[ment]
to relief requires more than labels and conclusions, and a formulaic recitation of the
elements of a cause of action will not do." /d. at 545 (alteration in original) (citation
omitted). The "[f]actual allegations must be enough to raise a right to relief above the
speculative level on the assumption that all of the complaint's allegations are true." /d.
Furthermore, "[w]hen there are well-pleaded factual allegations, a court should assume
their veracity and then determine whether they plausibly give rise to an entitlement to
relief." Ashcroft v. Iqbal, 129 S. Ct. 1937, 1950 (2009). Such a determination is a
context-specific task requiring the court "to draw on its judicial experience and common
A. Direct Infringement
A cause of action for direct infringement arises under 35 U.S.C. § 271 (a), which
provides that "whoever without authority makes, uses, offers to sell, or sells any
patented invention ... during the term of the patent therefor, infringes the patent." To
state a claim of direct infringement, "a patentee need only plead facts sufficient to place
the alleged infringer on notice as to what he must defend." McZeal v. Sprint Nextel
Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007) (citing Twombly, 550 U.S. at 565 n.10).
The Federal Circuit in McZeal held that, for a direct infringement claim, Federal Rules of
Civil Procedure Form 182 (2009) meets the Twombly pleading standard. See McZeal,
501 F.3d at 1356-57. That is, only the following is required: "(1) an allegation of
jurisdiction; (2) a statement that plaintiff owns the patent; (3) a statement that defendant
has been infringing the patent by 'making, selling, and using [the device] embodying the
patent'; (4) a statement that the plaintiff has given the defendant notice of its
infringement; and (5) a demand for an injunction and damages." McZeal, 501 F.3d at
1357; see also S.O.I. TEC Silicon on Insulator Techs., S.A. v. MEMC Elec. Materials,
Inc., Civ. No. 08-292-SLR, 2009 WL 423989, at *2 (D. Del. Feb. 20, 2009).
The parties do not dispute that plaintiff has stated: (1) an allegation of
jurisdiction; (2) that it owns the patent; (3) that defendant has infringed the patent by
making, selling, and using products embodying the patents-in-suit; and (4) a demand
for injunction and damages, consistent with Form 18. 3 See McZeal, 501 F.3d at 1357.
Defendant argues that plaintiff's amended complaint lacks basic factual support
to show that plaintiff's claims are facially plausible. (D. I. 31 at 5) Defendant claims
plaintiff must give notice "whether product or method claims are infringed, and the type
of infringement being alleged," and must "apply the claims of each and every patent
that is being brought into the lawsuit to an accused device and conclude that there is a
reasonable basis for a finding of infringement of at least one claim of each patent so
Formerly, Form 16.
Piaintiff's complaint does not contain a statement that plaintiff has given the
defendant notice of its infringement. Defendant has not raised this issue.
asserted." (/d. at 7) (quoting View Engineering, Inc. v. Robotic Vision Systems, Inc.,
208 F.3d 981, 986 (Fed. Cir. 2000)). 4
This court has previously held that plaintiff's pleadings must mimic Form 18 and
identify a general category of products. Eidos Communications, LLC v. Skype
Technologies SA, 686 F. Supp. 2d 465, 469 (D. Del. 2010). A plaintiff is obligated to
specify "at a minimum, a general class of products or a general identification of the
alleged infringing methods." Eidos, 686 F. Supp. 2d at 467; see also, Mark IV Indus.
Corp. v. Transcore, L.P., Civ. No. 09-518,2009 WL 4828661, at *3 (D. Del. Dec. 2,
2009) ("Plaintiff did not have to plead specific claims of the patent allegedly infringed or
describe how the allegedly infringing products work."). The complaint at bar provides
the level of detail required to satisfy the pleading standard for Form 18 :
This is a civil action for patent infringement arising from Ruckus's manufacture,
use, sale or offers for sale within the United States or importation into the United
States of products, including wireless communication products, that infringe
United States Patent Nos. 5,812,531 ("the '531 patent"), 6,621,454 ("the '454
patent"), 7,263,143 ("the '143 patent"), and 5,507,035 ("the '035 patent").
(D.I. 28 at 1f4) (emphasis added) (see McZeal, 501 F.3d at 1357).
In addition, plaintiff identifies, by name, products that infringe plaintiffs patents:
On information and belief, 5 Ruckus has infringed and continues to infringe the
The View Engineering case did not address Form 18 or Rule 8 pleading
standards, but centered on the duty imposed on attorneys under Rule 11. 208 F.3d at
Defendant argues that plaintiff's claim of patent infringement "on information
and belief' is insufficient. (D. I. 31 at 7) The Third Circuit has held that a complaint
must be viewed in the "light most favorable to plaintiff and the truth of all facts well
pleaded, which includes facts alleged on information and belief." Frederick Hart & Co.
v. Recordgraph Corp., 169 F.2d 580, 581 (3d Cir. 1948) (quoting Carroll v. Morrison
Hotel Corp., 149 F.2d 404,406 (7th Cir. 1945)).
'531 patent by making, using, selling, and/or offering for sale in the United States
and/or importing into the United States products, including without limitation, the
ZoneDirector and ZoneFiex products.
10) (emphasis added)
On information and belief, Ruckus has infringed and continues to infringe the
'454 patent by making, using, selling, and/or offering for sale in the United States
and/or importing into the United States products, including without limitation,
16) (emphasis added)
On information and belief, Ruckus has infringed and continues to infringe the
'143 patent by making, using, selling, and/or offering for sale in the United States
and/or importing into the United States products, including without limitation,
ZoneFiex and MediaFiex products.
22) (emphasis added)
On information and belief, Ruckus has directly infringed and continues to directly
infringe the '035 patent by making, selling, and/or offering for sale in the United
States and/or importing into the United States products, including without
limitation, ZoneFiex products.
28) (emphasis added)
Defendant argues that the use of "and/or" in pleading both direct and indirect
infringement stands outside the scope of Form 18. (D.I. 34 at 2) Defendant cites
Benderv. LG Elect's. U.S.A., Inc., Civ. No. 09-02114,2010 WL 889541, at *5 (N.D. Cal.
Mar. 11, 201 0), for the proposition that the addition of "and/or" listing every possible
type of infringement is materially different from the pleading standard contemplated by
Form 18. (!d.) However, the Bender case focused not on pleading language, but on
plaintiff's failure to identify the alleged infringing products with enough specificity for the
court to determine the plausibility of plaintiff's patent infringement claims. 6 2010 WL
889541, at *3.
The court concludes that plaintiff's amended complaint asserts a cause of action
for direct infringement in a manner sufficient for defendant to formulate a response and
defense. The pleading provides sufficient factual support and mimics Form 18.
B. Indirect Infringement
1. Inducement standard
Under 35 U.S.C. § 271 (b), "whoever actively induces infringement of a patent
shall be liable as an infringer." "To demonstrate inducement of infringement, the
patentee must establish 'first that there has been direct infringement, and second that
the alleged infringer knowingly induced infringement and possessed specific intent to
encourage another's infringement."' Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,
697 (Fed. Cir. 2008). "Induced infringement requires knowledge that the inducing
actions constitute patent infringement." Global-Tech Appliances, Inc. v. SEB S.A., 131
S.Ct. 2060, 2068 (2011 ). "Inducement requires evidence of culpable conduct, directed
to encouraging another's infringement, not merely that the inducer had knowledge of
Language in the Bender amended complaint is consistent with plaintiff's
complaint at bar. The amended complaint read:
Defendants have infringed the '188 patent by "making, using, offering for sale
and/or selling" products that contain or utilize a certain, high-speed analog
circuit, specifically a "buffered transconductance amplifier" commonly known as a
"current feedback amplifier," a "high-gain current feedback amplifier," or a
"voltage feedback amplifier." Bender, 2010 WL 889541, at *2.
the direct infringer's activities." DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293,
1306 (Fed. Cir. 2006) (en bane in relevant part).
a. Knowledge of the patent
The complaint provides as follows with respect to whether defendant had the
requisite knowledge of the '035 patent:
Ruckus has had knowledge of the '035 patent long before the filing of this
lawsuit because Ruckus previously licensed the '035 patent from IBM
29) (emphasis added) The foregoing is sufficient to infer that defendant
knew or had knowledge of the patent because, presumably, the defendant read and
evaluated the patent before entering a license agreement with IBM Corporation. See
Weiland Sliding Doors and Windows, Inc. v. Panda Windows and Doors, LLC, Civ. No.
10CV677, 2012 WL 202664, at *4 (S.D. Cal. Jan. 23, 2012) ("As to defendants'
knowledge of Weiland's patents, the Court finds that Weiland has pleaded enough facts
for the Court to infer that Defendants had such knowledge.").
b. Intent to induce
The amended complaint also alleges the requisite intent to induce infringement
of the '035 patent. The complaint reads:
The license between Ruckus and IBM Corporation has terminated. Subsequent
to its termination, IBM assigned the '035 patent to NETGEAR. In addition to
Ruckus's direct infringement of the '035 patent, Ruckus's customers have
infringed and are infringing the '035 patent through their use of Ruckus's
ZoneFiex products. For example, Ruckus's customers Douglas County School
District and Satilla Regional Medical Center employ Ruckus's ZoneDirector
and/or FlexMaster to manage the wireless infrastructure and use of ZoneFiex
products. Ruckus has numerous other customers that employ these products in
a similar manner, including without limitation, entities in the education,
hospitality, and health care industries.
29) (emphasis added) The complaint further reads:
Ruckus has knowingly induced infringement of the '035 patent with specific intent
to do so by its activities relating to the marketing and distribution of its
ZoneDirector, FlexMaster, and/or ZonePianner products to manage the use of
(/d.) That is, defendant knew of the '035 patent and made the decision to seek a
license from IBM for the '035 patent. When the license expired, defendant apparently
made the business decision to continue to sell its ZoneFiex products to its customers
with the intent that its customers infringe the '035 patent. For example, "Ruckus's
customers ... employ Ruckus's Zone Director and/or FlexMaster to manage the
wireless infrastructure and use of ZoneFiex products." 7 (/d.) Plaintiff's allegations that
defendant is involved in the "marketing and distribution" of its products are sufficient to
claim induced infringement. See Water Technologies Corp. v. Calco, Ltd., 850 F.2d
660, 668 (Fed. Cir. 1988) ("Gartner argues that no proof of a specific, knowing intent to
induce infringement exists. While proof of intent is necessary, direct evidence is not
required; rather, circumstantial evidence may suffice."); see also Grice Engineering, Inc.
v. JG Innovations, Inc., 691 F. Supp. 2d 915, 927 (W.O. Wis. 2010) ("Plaintiff alleges
that defendant Grice participated in marketing the allegedly infringing products and
acted willfully to infringe plaintiff's patent. I conclude that such allegations permit an
inference that Grice 'possessed the specific intent' to encourage infringement and
Piaintiff's response reads:
Ruckus sells networking management products and services called
ZoneDirector, FlexMaster, and ZonePianner. These Ruckus products help its
customers set-up, manage, and/or monitor the exact networking products
accused of direct infringement, namely the ZoneFiex products. (0.1. 33 at 13)
actively aided and abetted JG Innovations' alleged infringement."); Weiland Sliding
Doors and Windows, 2012 WL 202664, at *6 ("With knowledge that their products were
infringing, Defendants distributed them to third parties who, in offering for sale, selling,
assembling, installing, and using the products, directly infringed Weiland's patents.
Weiland has sufficiently alleged Defendants' specific intent to induce infringement.").
2. Contributory standard
Under 35 U.S.C. § 271 (c), a patentee must demonstrate that an alleged
contributory infringer has sold, offered to sell or imported into the United States a
component of an infringing product "knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non infringing use." Therefore, § 271 (c)
"require[s] a showing that the alleged contributory infringer knew that the combination
for which [its] component was especially designed was both patented and infringing."
Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964).
Defendant argues that plaintiff's amended complaint fails to allege any facts to
support its claim for contributory infringement. (D. I. 31 at 13) The court disagrees.
Plaintiff's amended complaint satisfies the elements of contributory infringement by
alleging that defendant: (1) had knowledge of the patent; (2) sold products especially
made for infringing use; (3) had knowledge of the infringing use; (4) sold products with
no substantial noninfringing use; 8 and (5) directly infringed. Plaintiff's claims are facially
The complaint reads:
On information and belief, Ruckus possessed intent to contributorily infringe the
'035 patent, knowing that its ZoneFiex products were components especially
plausible and provide defendant with adequate notice of its indirect infringement claims.
To establish willful infringement, a patent owner must demonstrate by clear and
convincing evidence that the infringer acted despite an "objectively high likelihood that
its actions constituted infringement" and must also demonstrate that this "objectivelydefined risk was known or so obvious that it should have been known to the accused
infringer." In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).
As discussed supra, plaintiff sufficiently alleges that defendant had pre-filing
knowledge of the '035 patent, yet infringed and continues to infringe the patent. The
court can infer from plaintiff's amended complaint that defendant knew or should have
known that its conduct would likely infringe a valid patent. This court "declines to
require more detail with respect to plaintiff's willful infringement claims than is required
by Form 18." S.O.I. TEC Silicon on Insulator Techs., S.A. v. MEMC Elec. Materials,
Inc., Civ. No. 08-292, 2009 WL 423989, at *2 (D. Del. Feb. 20, 2009); see also
Fotomedia Technologies, LLC v. AOL, LLC., Civ. No. 07-255, 2008 WL 4135906, at *2
(E. D. Tex. Aug. 29, 2008) ("Level of detail provided by FotoMedia in its allegations of
indirect infringement are similar to those approved by Form , the Federal Circuit,
and the courts in this district. The same is true for the allegations of willful infringement
made or adapted for use in infringing the '035 patent, having no substantial
(D.I. 28 at 1129) (emphasis added)
that remain against AOL, Yahoo and Shutterfly.").
For the aforementioned reasons, defendant's motion to dismiss for failure to
state a claim is denied. An appropriate order shall issue.
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