Rhodes Pharmaceuticals L.P. v. Indivior Inc.

Filing 16

MEMORANDUM OPINION. Signed by Judge Mitchell S. Goldberg on 1/8/2018. (fms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

RHODES PHARMACEUTICALS L.P.
Plaintiff,
v.
INDIVIOR, INC.
Defendant.

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CIVIL ACTION

NO. 16-1308

Goldberg, J.

January 8, 2018
MEMORANDUM OPINION

This case involves a patent dispute between manufacturers of opioid addiction
substitution therapy drugs.

Plaintiff Rhodes Pharmaceuticals, L.P. (“Rhodes”) has sued

Defendant Indivior, Inc. (“Indivior”) alleging patent infringement in connection with
Defendant’s sale of Suboxone Sublingual Film. Specifically, Plaintiff brings claims for direct
infringement, indirect infringement, contributory infringement, and willful infringement.
Defendant moves to dismiss the case for failure to state a claim under Federal Rule of Civil
Procedure 12(b)(6). For the following reasons, the Motion will be granted in part and denied in
part.

I.

FACTUAL BACKGROUND1
On June 21, 2016, the United States Patent and Trademark Office (“USPTO”) issued

United States Patent No. 9,370,512 (the “512 Patent”)—entitled “Buprenorphine-Wafer for Drug
Substitution Therapy”—to Plaintiff Rhodes. (Compl. ¶ 9.) Independent claim 1 of the ‘512
patent contains the following eight distinct elements:
A method of opioid substitution therapy for treating opioid addiction, the method
comprising contacting the sublingual mucosa of a patient in need thereof with a sublingual film
dosage form comprising:
a) approximately 0.1 mg to approximately 16 mg buprenorphine, or an equivalent amount of a
pharmaceutically acceptable salt thereof;
b) naloxone or a pharmaceutically acceptable salt thereof; and
c) at least one non-gelatin polymeric film-forming material in which the buprenorphine or the
equivalent amount of the pharmaceutically acceptable salt thereof, are dissolved or
homogeneously dispersed;
the buprenorphine or the equivalent amount of the pharmaceutically acceptable salt thereof and
the naloxone or the pharmaceutically acceptable salt thereof being present in the sublingual film
dosage form in a weight ration of from 1:1 to 10:1;
such that within less than 5 minutes after contacting the sublingual mucosa of the patient with the
sublingual film dosage form, the buprenorphine or the pharmaceutically acceptable salt thereof
and approximately substantially all of the naloxone or the pharmaceutically acceptable salt
thereof contact the sublingual mucosa,
And wherein said contacting achieves (i) an average buprenorphine AUC0-48 from approximately
10 to approximately 15 (hrs*ng)/ml when the sublingual film dosage form includes 4 mg
buprenorphine or an equivalent amount of a pharmaceutically acceptable salt thereof; (ii) an
average buprenorphine AUC0-48 from approximately 15 to approximately 25 (hrs*ng)/ml when
the sublingual film dosage form includes 8 mg buprenorphine or an equivalent amount of a
pharmaceutically acceptable salt thereof or (iii) an average buprenorphine AUC0-48 from
approximately 25 to approximately 40 (hrs*ng)/ml when the sublingual film dosage form
includes 16 mg buprenorphine or an equivalent amount of a pharmaceutically acceptable salt
thereof.
(Compl., Ex. A.) Independent claim 19 contains at least seven distinct elements:
1

When determining whether to grant a motion to dismiss, a federal court must construe the
complaint liberally, accept all well-pleaded factual allegations in the complaint as true, and draw
all reasonable inferences in favor of the plaintiff. Fowler v. UPMC Shadyside, 578 F.3d 203,
211 (3d Cir. 2009). In accordance with this principle, my recitation of the facts assumes the truth
of the factual statements in the Complaint.

2

A method of opioid substitution therapy for treating opioid addiction, the method comprising
Contacting the sublingual mucosa of a patient in need thereof with a sublingual film dosage form
comprising:
a) an amount of buprenorphine, or an equivalent amount of a pharmaceutically acceptable salt
thereof, sufficient to provide an average buprenorphine Cmax of less than 40 (hrs*ng)/ml;
b) naloxone or a pharmaceutically acceptable salt thereof; and
c) at least one non-gelatin polymeric film-forming material in which the burprenorphine or the
equivalent amount of the pharmaceutically acceptable salt thereof and the naloxone or the
pharmaceutically acceptable salt thereof, are dissolved or homogeneously dispersed;
the buprenorphine or the equivalent amount of the pharmaceutically acceptable salt thereof and
the naloxone or the pharmaceutically acceptable salt thereof being present in the sublingual film
dosage form in a weight ration of from 1:1 to 10:1;
Such that within less than 5 minutes after contacting the sublingual mucosa of the patient with
the sublingual film dosage form, the buprenorphine or the pharmaceutically acceptable salt
thereof and approximately substantially all of the naloxone or the pharmaceutically acceptable
salt thereof contact the sublingual mucosa.
(Id.)
Defendant Indivior is the holder of a New Drug Application (“NDA”) No. 22-410 for
SUBOXONE® (buprenorphine and naloxone) Sublingual Film (“Suboxone Sublingual Film”).
The FDA approved NDA No. 22-410, on August 30, 2010, for the treatment of opioid
dependence. Since its approval, Defendant has sold and continues to sell Suboxone Sublingual
Film in the United States. In connection with those sales, Defendant provides information and
instructions to healthcare professionals and/or patients regarding its Suboxone Sublingual Film,
including Prescribing Information and Medication Guides (“Prescribing Information”).

(Id.

¶¶ 10–13.) The Prescribing Information provides, in pertinent part:


“SUBOXONE sublingual film is indicated for treatment of opioid dependence and should
be used as part of a complete treatment plan to including counseling and psychosocial
support.” (Id. ¶ 14.)



“Sublingual Administration: Place one film under the tongue, close to the base on the left
or right side, and allow to completely dissolve.” (Id. ¶ 15.)



Suboxone Sublingual Film “contains polyethylene oxide, hydroxypropl methylcellulose,
maltitol, acesulfame potassium, lime flavor, citric acid, sodium citrate, FD&C yellow #6,
and white ink.” (Id. ¶ 16.)

3



Suboxone Sublingual Film comes in four dosage strengths: “Sublingual film: 2 mg
buprenorphine with 0.5 mg naloxone, 4 mg buprenorphine with 1 mg naloxone, 8 mg
buprenorphine with 2 mg naloxone and 12 mg buprenorphine with 3 mg naloxone.” (Id.
¶ 17.)
On December 23, 2016, Plaintiff initiated this litigation alleging that the use or

administration of any of the four aforementioned dosage strengths of Defendant’s Suboxone
Sublingual Film by healthcare professionals and/or patients for treating opioid addiction has and
continues to directly infringe on one or more claims of the ‘512 patent under 35 U.S.C. § 271(a),
including, at minimum, independent claims 1 and 19.
On May 9, 2017, Defendant filed a Motion to Dismiss pursuant to Federal Rule of Civil
Procedure 12(b)(6). Plaintiff responded on May 23, 2017 and Defendant filed a Reply Brief on
May 30, 2017.
II.

STANDARD OF REVIEW
Under Federal Rule of Civil Procedure 12(b)(6), a defendant bears the burden of

demonstrating that the plaintiff has not stated a claim upon which relief can be granted. Fed. R.
Civ. P. 12(b)(6); see also Hedges v. United States, 404 F.3d 744, 750 (3d Cir. 2005). The United
States Supreme Court has recognized that “a plaintiff’s obligation to provide the ‘grounds’ of his
‘entitle[ment] to relief’ requires more than labels and conclusions.” Bell Atl. Corp. v. Twombly,
550 U.S. 544, 555 (2007) (quotations omitted). “[T]hreadbare recitals of the elements of a cause
of action, supported by mere conclusory statements, do not suffice” and “only a complaint that
states a plausible claim for relief survives a motion to dismiss.” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009). “A claim has facial plausibility when the plaintiff pleads factual content that allows
the court to draw the reasonable inference that the defendant is liable for the misconduct
alleged.” Id. A complaint does not show an entitlement to relief when the well-pleaded facts do
not permit the court to infer more than the mere possibility of misconduct. Id.
4

The United States Court of Appeals for the Third Circuit has detailed a three-step process
to determine whether a complaint meets the pleadings standard. Bistrian v. Levi, 696 F.3d 352
(3d Cir. 2014). First, the court outlines the elements a plaintiff must plead to state a claim for
relief. Id. at 365. Next, the court must “peel away those allegations that are no more than
conclusions and thus not entitled to the assumption of truth.” Id. Finally, the court “look[s] for
well-pled factual allegations, assume[s] their veracity, and then ‘determine[s] whether they
plausibly give rise to an entitlement to relief.’” Id. (quoting Iqbal, 556 U.S. at 679). The last
step is “a context-specific task that requires the reviewing court to draw on its judicial experience
and common sense.” Id. (quoting Iqbal, 556 U.S. at 679).
Although claims of direct infringement were previously governed by Federal Rule of
Civil Procedure 84 and the Appendix of Forms, those rules were abrogated effective December
1, 2015. Raindance Techs., Inc. v. 10x Genomics, Inc., No. 15-150, 2016 WL 927143, at *2 (D.
Del. Mar. 4, 2016). It is now well established that both direct and indirect infringement claims
are subject to the Twombly/Iqbal standard. IP Commc’n Solutions, LLC v. Viber Media (USA)
Inc., No. 16-134, 2017 WL 1312942, at *2 (D. Del. Apr. 5, 2017); RAH Color Techs LLC v.
Ricoh USA Inc., 194 F. Supp. 3d 346, 350–51 (E.D. Pa. 2016).
III.

DISCUSSION
Defendant’s Motion to Dismiss argues that Plaintiff’s Complaint is too vague and

conclusory to pass muster under the Iqbal/Twombly pleading standard. Defendant specifically
contends that the Complaint fails to adequately plead claims of direct infringement, indirect
infringement, contributory infringement, or willful infringement of the ‘512 patent. Plaintiff
responds that the Complaint sufficiently sets forth both elements of its claims and factual
allegations in support, as required by Federal Rule of Civil Procedure 8.

5

A.

Direct Infringement Under 35 U.S.C. § 271(a)

Defendant first challenges Plaintiff’s direct infringement claim, brought pursuant to 35
U.S.C. § 271(a).
The direct infringement of a patent occurs when a party, without authority, “makes, uses,
offers to sell, or sells any patented invention, within the United States. . . .” 35 U.S.C. § 271(a).
A patentee may prove direct infringement under § 271(a) either by (1) demonstrating specific
instances of direct infringement; or (2) showing that an accused device necessarily infringes on
the patent. ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007).
In order to adequately plead a cause of action for direct infringement of a method claim,2
the complaint must allege that the accused infringer “perform[ed] all the steps of the claimed
method, either personally or through another acting under his direction or control.” Courtesy
Prods, LLC v. Hamilton Beach Brands, Inc., 73 F. Supp. 3d 435, 439 (D. Del. 2014). In other
words “direct infringement requires a single party to perform every step of a claimed method.”
Forest Labs. Holdings Ltd. v. Mylan, Inc., 206 F. Supp. 3d 957, 973 (D. Del. 2016).
Defendant contends that the Complaint fails to include an allegation that it practices any
of the method claims in the ‘512 patent or that the use of Suboxone Sublingual Film meets each
and every limitation of any claim of the ’512 patent. Plaintiff concedes, in its response to the
Motion to Dismiss, that it does not and cannot allege direct infringement under § 271(a) because
the methods were not practiced by Defendant.3 Given this concession, I will grant this portion of
the Motion to Dismiss.

2

Unlike a product claim, a method claim applies “to a process, which consists of a series
of acts or steps.” In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002).
3

Plaintiff states that it did not bring a claim for direct infringement against Defendant.
Specifically, Plaintiff states that it “does not allege that Indivior directly infringes the ‘512
6

B.

Inducement of Infringement Under 35 U.S.C. § 271(b)

Under 35 U.S.C. § 271(b), “[w]hoever actively induces infringement of a patent shall be
liable as an infringer.” Id. “Inducement requires evidence of culpable conduct, directed to
encouraging another’s infringement, not merely that the inducer had knowledge of the direct
infringer’s activities.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en
banc in relevant part). To prevail on a claim of induced infringement, the patentee “must show
[(1)] direct infringement, and [(2)] that the alleged infringer knowingly induced infringement and
possessed specific intent to encourage another’s infringement.” Toshiba Corp. v. Imation Corp.,
681 F.3d 1358, 1363 (Fed. Cir. 2012) (quoting i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831,
851 (Fed. Cir. 2010)).
Defendant avers that the Complaint fails to adequately plead either of the required
elements for inducement of infringement. Upon consideration of each argument, I find that the
inducement claim survives Rule 12(b)(6) scrutiny.
1.

Direct Infringement by Healthcare Professionals and Patients

Defendant first challenges the adequacy of Plaintiff’s allegations of direct infringement
by others, asserting that Plaintiff fails either to allege that all claim elements have been infringed
or to identify a specific direct infringer.
As set forth above, “[l]iability for indirect infringement may arise “if, but only if, [there
is] . . . direct infringement.” Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111,
2117 (2014) (citation omitted). To prove direct infringement, the infringing entity must perform
each and every step or element of the claimed method or product.” Exergen Corp. v. Wal–Mart
patent.” (Pl.’s Opp’n Mot. to Dismiss, p. 1, n.1.) However, the Complaint expressly seeks a
judgment that “Defendant has infringed one or more claims of the ‘512 Patent.” (Compl., Prayer
for Relief ¶ A.) For purposes of clarity, I will dismiss any potential claim of direct infringement
by Indivior.
7

Stores, Inc., 575 F.3d 1312, 1320 (Fed. Cir. 2009) (quoting BMC Res., Inc. v. Paymentech, L.P.,
498 F.3d 1373, 1378 (Fed. Cir. 2007)).

On a motion to dismiss, a complaint for patent

infringement need not match up specific instructions to claim elements in a method claim.
DermaFocus LLC v. Ulthera, Inc., 201 F. Supp. 3d 465, 471 n.11 (D. Del. 2016).4 Rather, a
plaintiff need only give a defendant reasonable notice of a plausible claim for direct
infringement. Id. at 470; see also AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1060 (Fed.
Cir. 2010) (noting that inducement need not be premised on explicit instructions to perform the
infringing method, where the proposed label “would inevitably lead some consumers to practice
the claimed invention.”).
Here, Plaintiff has sufficiently alleged direct infringement by healthcare professionals/
patients. The Complaint identifies the elements of the two independent claims at issue. (Compl.
¶¶ 20, 21.) It then states that “Defendant has induced and continues to induce infringement by
affirmatively aiding, abetting, urging, or encouraging direct infringement by healthcare
professionals and/or patients, by inter alia, instructing them to use Defendant’s Suboxone
Sublingual Film in a manner that directly infringes one or more claims of the ‘512 patent.” (Id.
¶ 25.) The Complaint further specifies that Defendant’s instructions were carried out by:
providing Prescribing Information and other instructions that
instruct healthcare professionals and/or patients to perform the
claimed methods, including methods of opioid substitution therapy
or treating opioid addiction comprising contacting the sublingual
mucosa of a patient in need thereof with a sublingual film dosage
form comprising at least one non-gelatin polymeric film-forming
material in which certain amounts of buprenorphine and naloxone
or their pharmaceutically acceptable salts, are dissolved or
4

Defendant takes issue with Plaintiff’s citation to Dermafocus, arguing that the facts in
that case are distinguishable on multiple levels. These distinctions, however, do not detract from
the legal point that in pleading a method claim, Twombly/Iqbal standards do not require that a
complaint match up claim elements with specific instructions.
8

homogeneously dispersed wherein within less than 5 minutes after
contacting the sublingual mucosa the buprenorphine and
approximately substantially all of the naloxone contact the
sublingual mucosa, wherein said contacting achieves the
pharmacokinetic of at least claims 1 and 19.
(Compl. ¶ 25.). The Complaint also identifies which claim elements are infringed by which
specific instructions.5 These allegations are sufficient because, as noted above, the Complaint
need not match up specific claim elements to specific instructions in order to survive a motion to
dismiss.
The fact that Plaintiff has not identified specific healthcare providers or patients that have
carried out the allegedly infringing method is also of no moment.

A plaintiff need not

specifically identify the customers who are induced to infringe, as this is a “proper question for
discovery.” Minkus Elec. Display Sys., Inc. v. Adaptive Micro Sys. LLC, No. 10–666, 2011 WL
941197, at *3 (D. Del. Mar. 16, 2011). A plaintiff must only “plead[] facts sufficient to allow an
inference that at least one direct infringer exists.” Bill of Lading Transmission & Processing
Sys. Patent Litig., 681 F.3d 1323, 1336 (Fed. Cir. 2012). Such an inference is permissible from
an allegation that a product is used by customers who then infringe the patent by practicing the
method disclosed in the patent. E.I. Du Pont de Nemours and Co. v. Heraeus Holding GmbH,
No. 11-773, 2012 WL 4511258, at *4 (D. Del. Sept. 28, 2012).

5

Defendant argues that Plaintiff’s direct infringement “claim chart” in its opposition to the
Motion to Dismiss constitutes “new factual allegations” which did not appear in the Complaint.
I find this characterization incorrect. Plaintiff’s chart simply takes the claim elements and the
Prescribing Information, all of which are either detailed in the Complaint or included in the
exhibits attached to the Complaint, and matches them up in order to demonstrate the alleged
infringement. See Hartig Drug Co. Inc. v. Senju Pharm Co. Ltd., 836 F.3d 261, 268 (3d Cir.
2016) (holding that, in consideration of a motion to dismiss, a court may rely on an exhibit
attached to the complaint and all reasonable inferences that may be drawn from it). In other
words, this chart is not new information, but rather the same information from the Complaint
organized in a different way so as to respond appropriately to the Motion to Dismiss.
9

Here, the Complaint alleges that the Prescribing Information instructs healthcare
professionals and/or patients to perform the claimed methods of opioid substitution therapy for
treating opioid addiction, and that “[t]he use or administration of any of the four dosage strengths
of Defendant’s Suboxone Sublingual Film by healthcare professionals and/or patients for opioid
substitution therapy for treating opioid addiction has directly infringed and continues to directly
infringe one or more claims of the ‘512 patent.” (Compl. ¶¶ 19, 25.) These allegations are
sufficient to survive a Rule 12(b)(6) motion.
2.

Defendant’s Intent to Induce Direct Infringement

Defendant also contends that the induced infringement claim fails because Plaintiff has
not adequately pled intent.
“[L]iability for induced infringement can only attach if the defendant knew of the patent
and knew as well that ‘the induced acts constitute patent infringement.” Commill USA, LLC v.
Cisco Sys., Inc., 135 S. Ct. 1920, 1926–27 (2015) (citing Global-Tech Appliances, Inc. v. SEB
S.A., 563 U.S. 754, 763 (2011)). The knowledge requirement must be met by a showing of
either actual knowledge or willful blindness. Global–Tech, 563 U.S. at 766. At the pleading
stage, “the question before the Court on defendants’ motions to dismiss is whether [the plaintiff]
has plead sufficient facts . . . for the Court to infer that the defendants had knowledge of [the
plaintiff's] patents and that their products infringed on those patents.” MONEC Holding AG v.
Motorola Mobility, Inc., 897 F. Supp. 2d 225, 229 (D. Del. 2012) (quotations omitted) (emphasis
in original); see also In re Bill of Lading, 681 F.3d at 1339 (“To survive . . . a motion to dismiss,
therefore, [the plaintiff’s] amended complaint[ ] must contain facts plausibly showing that [the
defendant] specifically intended [its] customers to infringe the [patents-in-suit] and knew that the
customer’s acts constituted infringement.”).

10

When the alleged inducement relies on a drug label’s instructions, “[t]he question is not
just whether [those] instructions describ[e] the infringing mode, . . . but whether the instructions
teach an infringing use such that we are willing to infer from those instructions an affirmative
intent to infringe the patent.” Takeda Pharms. U.S.A., Inc. v. West-Ward Pharms. Corp., 785
F.3d 625, 631 (Fed. Cir. 2015) (internal quotations omitted) (emphasis in original). “The label
must encourage, recommend, or promote infringement.” Id.; see also Eli Lilly and Co. v. Teva
Parenteral Medicines, Inc., 845 F.3d 1357, 1368 (Fed. Cir. 2017) (noting that it is irrelevant that
some users may ignore the proposed label).

However, “there is no requirement that

Defendants[’] [prescribing labels] need to have mimicked the precise wording of [the patent
claim].” GlaxoSmithKline LLC v. Glenmark Generics Inc., USA, Nos. 14-877, 14-878, 2015
WL 3793757, at *8 (D. Del. Apr. 22, 2015). “Instead the question is whether the allegations,
when considered in their entirety and in context, plausibly suggest an intent and actions to
encourage administration of [the drug at issue] in a manner that would meet the claim
limitations.” Id. (emphasis in original).
Here, Plaintiff alleges that although Indivior began using the alleging infringing
Prescribing Instructions before the ‘512 patent issued, Indivior continued to instruct physicians
and patients to use Suboxone Sublingual Film in an infringing manner after it became aware of
the ‘512 patent and its claimed methods. The Complaint asserts that “since at least the date that
the ‘512 patent issued, Defendant has had knowledge that the induced acts would constitute
infringement of the ‘512 patent and has specifically intended to cause such infringement.”
(Compl. ¶ 26.)

The Complaint further states that Defendant has “intentionally provided

Prescribing Information and other instructions to healthcare professionals and/or patients that
instruct . . . [them] to perform the claimed methods . . . with knowledge that use by healthcare

11

professionals and/or patients in accordance with the Prescribing Information and other
instructions directly infringes the ‘512 patent.” (Id.)
Defendant responds that prior to the issuance of the ‘512 patent, it used the same
Prescribing Information for Suboxone, but obviously could not have intended to induce
infringement at that time because there was no patent to be infringed. Defendant argues that for
a plausible claim of inducement of infringement, Plaintiff would have to allege that—after the
issuance of the ‘512 patent six years later—Defendant took some affirmative acts to teach an
infringing method, or that its intentions in continuing to use the Prescribing Information
somehow changed.

Defendant contends that the Complaint makes no allegation of any

intervening affirmative act, and that Plaintiff cannot feasibly allege a change in Defendant’s
intentions because “[w]hatever Indivior’s ‘intention’ may have been in providing a label for
Suboxone Sublingual Film, that intention was fixed as of the time the label first issued in 2010
following FDA approval.” (Def.’s Mem. Supp. Mot. to Dismiss p. 17.)
While Defendant’s theory could potentially have merit following discovery, it is a factbased defense that cannot be decided on a Rule 12(b)(6) motion to dismiss. The Federal Circuit
has held that, as a general rule, “inducement of infringement under § 271(b) does not lie when
the acts of inducement occurred before there existed a patent to be infringed.” Nat’l Presto
Indus. v. West Bend Co., 76 F.3d 1185, 1196 (Fed. Cir. 1996). Rather, “[t]he purpose must be
wrongful at the time of the action with which the abettor is charged.” Id. “The question is
whether a party had the intent to and did encourage the wrongful act of patent infringement in
the relevant time frame—after a patent has issued.” GlaxoSmithKline LLC v. Teva Pharms.
USA, Inc., No. 14-878, 2016 WL 3946770, at *11 (D. Del. July 20, 2016) (citing Nat’l Presto,
76 F.3d at 1194) (emphasis in original). To that end, so long as a party has alleged acts of

12

inducement that occurred after the issuance of the patent-in-suit, a claim of induced infringement
can survive a motion to dismiss. Id.
The issue of intent has repeatedly arisen in the context where the allegedly infringing
defendant had no knowledge of the patent prior to the initiation of litigation, but was afforded
notice of the patent-at-issue through service of the complaint. Courts have found that “[t]here is
no requirement that a plaintiff’s induced infringement claim be limited to presuit knowledge and
facts.” Telecomm Innovations, LLC v. Ricoh Co., Ltd., 966 F. Supp. 2d 390, 393 (D. Del. 2013)
(citing Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 565 (D. Del. 2012) (finding
“there is no legal impediment to having an indirect infringement cause of action limited to postlitigation conduct”)). Rather, the complaint must allege that the defendant has made a decision
to continue the alleged inducement post-service of the complaint.

Id.

Allegations that a

defendant continued to induce infringement after learning about the existence of the patent have
been deemed sufficient to plead a claim for inducement of infringement.

See, e.g.,

MyMedicalRecords, Inc. v. Jardogs, LLC, 1 F. Supp. 3d 1020, 1025 (C.D. Cal. 2014) (declining
to find that a defendant has “carte blanche to continue to indirectly infringe a patent—now with
full knowledge of the patents-in-suit—so long as it was ignorant of the patents prior to being
served itself with the complaint.”); L.A. Biomed. Rsch. Inst. at Harbor-UCLA Med. Ctr. v. Eli
Lilly & Co., No. 13-8567, 2014 WL 11241786, at *3 (C.D. Cal. May 12, 2014) (declining to
dismiss claim of induced infringement where the complaint contained allegations of “continued
culpable conduct after the issuance of the patent” through defendants’ failure to change the label
on their drug after the issuance of the patent-in-suit).
Similar to the foregoing cases, the Complaint here alleges that following the issuance of
the patent, Defendant—acting with knowledge of the patent—continued to provide the

13

Prescribing Information with the intent of encouraging healthcare professionals and/or patients to
perform the claimed methods. (Compl. ¶¶ 23, 25.) While somewhat cursory in nature, these
allegations are facially plausible and provide Defendant notice of the induced infringement
claim. At this early juncture of the litigation, I find that the Complaint sufficiently pleads that
Defendant intentionally induced infringement by purposefully encouraging health care providers
and patients to practice the method claims of the patent-in-suit.6
C.

Contributory Infringement Under 35 U.S.C. § 271(c)

Defendant next seeks dismissal of Plaintiff’s contributory infringement claim.

To

establish contributory infringement, the patent owner must demonstrate the following: (1) an
offer to sell, sale, or import; (2) a component or material for use in a patented process
constituting a material part of the invention; (3) knowledge by the defendant that the component
is especially made or especially adapted for use in an infringement of such patents; and (4) the
component is not a staple or article suitable for substantial noninfringing use. See Fujitsu Ltd. v.
Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010) (citing 35 U.S.C. § 271(c)). A defendant
“must know ‘that the combination for which his component was especially designed was both
patented and infringing.’” Global–Tech, 563 U.S. at 763 (citing Aro Mfg. Co. v. Convertible
Top Replacement Co., 377 U.S. 476, 488 (1964)). “This form of infringement is premised on the
idea that a defendant who displays sufficient culpability should be held liable as an infringer,
even though he may not have made, used, or sold a patented invention.” Arthrocare Corp. v.
Smith & Nephew, Inc., 310 F. Supp. 2d 638, 656 (D. Del. 2004) (citing Hewlett–Packard Co. v.
6

In its responsive brief, Plaintiff argues that Indivior amended its Prescribing Information
in December 2016, but declined to remove instructions to perform the claimed method of
sublingual administration, thereby evidencing Indivior’s intent to continue the induced
infringement. This allegation, however, is not in the Complaint and is supported by an exhibit
which was not attached to the original pleading. Accordingly, I may not consider it on a motion
to dismiss.
14

Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990)), vacated on other grounds, 406 F.3d
1365 (Fed. Cir. 2005).
First, Defendant contends that the Complaint fails to allege, under the second required
element, that Indivior sells “a component . . . of an infringing combination” because it does not
identify any particular alleging infringing combination, who knew it was infringing, who made
it, where it was sold, or who else contributed to it. This argument, however, disregards the fact
that § 271(c) presents two paths to liability: (1) sale or import of a component of a patented
machine, manufacture, combination or composition; or (2) sale or import of a composition, or a
material or apparatus for use in practicing a patented process. 35 U.S.C. § 271(c). While
Defendant is correct that Plaintiff does not set forth allegations under the first path, Plaintiff
properly asserts, under the second path, that “Defendant’s Suboxone Sublingual Film is a
material or apparatus for use in practicing the methods of the ‘512 patent, because, inter alia , it
is a sublingual film dosage form comprising at least one non-gelatin polymeric film-forming
material in which certain amounts of buprenorphine and naloxone or their pharmaceutically
acceptable salts, are dissolved or homogeneously dispersed, as described by the claims of the
‘512 patent.” (Compl. ¶ 29.)
Defendant’s second argument asserts that the Complaint fails to plausibly allege, under
the fourth required element, that Suboxone Sublingual Film has no substantial non-infringing
use. To establish a claim of contributory infringement, the patentee must plead facts that allow
an inference that the components sold or offered by the alleged infringer have no substantial noninfringing uses, “that is, uses that are ‘not unusual, far-fetched, illusory, impractical, occasional,
aberrant, or experimental.’” Aeritas, LLC v. Alaska Air Grp., Inc., 893 F. Supp. 2d 680, 684 (D.
Del. 2012) (quoting In re Bill of Lading, 681 F.3d at 1337 (further citations omitted)). A simple

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allegation that the product at issue is not suitable for substantial non-infringing use is generally
sufficient to satisfy the pleading requirements of Twombly and Iqbal. Id.; see also Cipla Ltd. v.
Sunovion Pharms. Inc., 174 F. Supp. 3d 869, 873 (D. Del. 2016) (allegation that defendant’s
“levalbuterol tartrate . . . can only be used for Xopenex HFA,” sufficient to allege no substantial
non-infringing uses).
Here, the Complaint specifically asserts that the allegedly infringed method set forth in
the ‘512 patent requires contact with the “sublingual mucosa”—i.e. administration by placing the
medicine under the tongue—as a method of administration of the drug, and the Prescribing
Information for Suboxone Film infringes this method by requiring that Suboxone Film be
administered by contact with the sublingual mucosa of a patient. (Id. ¶¶ 20–21, 25, 30 & Ex. A.,
col. 11:40–41.) The Complaint then states that “[o]n information and belief, since at least the
date that the ‘512 patent issued, Defendant has known that there is no substantial non-infringing
use for Defendant’s Suboxone Sublingual Film.” (Id. ¶ 32.) In stark contrast to the allegations
of the Complaint, however, the Prescribing Information, which is attached as an exhibit to the
Complaint, expressly provides for an alternate form of administration through buccal
administration—i.e. topical administration of a medicine by placing the drug between the gums
and cheek—as opposed to contact with the sublingual mucosa. (Id., Ex. B, at 2–5.) Defendant
contends that if physicians and patients are free to choose between buccal or sublingual
administration, as the Prescribing Information clearly states, then there is no facially plausible
support for Plaintiff’s allegation of “no substantial non-infringing use.”
While there appears to be a discrepancy between Plaintiff’s Complaint and the exhibit
attached thereto, the pleading stage of this case is not the time to conclusively determine that
buccal administration is a substantial non-infringing use of Suboxone film. This is particularly

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so where I must “assume the veracity” of the facts pled. Although the Prescribing Instructions
provide that Suboxone film may be administered bucally or sublingually during the maintenance
stage of treatment, they expressly state that, during the induction form of treatment, “it is
recommended that the sublingual site of administration be used” because “the exposure to
naloxone is somewhat higher after buccal than after sublingual administration.” (Compl., Ex. B,
at p.1.) Without further evidence and explanation, I cannot conclude, as a matter of law, that the
mere availability of buccal administration in the Prescribing Instructions constitutes a
“substantial, non-infringing use.” Accordingly, I will deny Defendant’s motion to dismiss on
this ground.
D.

Willful Infringement

Finally, Defendant seeks dismissal of Plaintiff’s willful infringement claim, arguing that
the Complaint fails to put forth any factual allegations that Indivior willfully infringed the patentin-suit.
Pursuant to § 284 of the Patent Act, once infringement has been established, the court
“may increase the damages up to three times the amount found or assessed.” 35 U.S.C. § 284.
Enhanced damages are “designed as a ‘punitive’ or ‘vindictive’ sanction for egregious
infringement behavior,” commonly described as “willful, wanton, malicious, bad faith,
deliberate, consciously wrongful, flagrant, or . . . characteristic of a pirate.” Halo Elecs,, Inc. v.
Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016). “[C]ulpability is generally measured against the
actor’s knowledge of the actor at the time of the challenged conduct.” Id. at 1933 (citations
omitted).

“A patent infringer’s subjective willfulness, whether intentional or knowing, may

warrant enhanced damages, without regard to whether his infringement was objectively
reckless.” Id. at 1926. Under this standard, generalized allegations of willfulness are sufficient

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to withstand a motion to dismiss. Bio-Rad Labs Inc. v. Thermo Fisher Scientific Inc., __ F.3d
__, 2017 WL 437733, at *1 (D. Del. Feb. 1, 2017); DermaFocus LLC v. Ulthera, Inc., 201 F.
Supp. 3d 465, 472 (D. Del. 2016).
The Complaint’s willful allegation claim, while a bit sparse, sets forth sufficient facts to
survive a Rule 12(b)(6) motion to dismiss. Plaintiff specifically alleges that “since at least the
date that the ‘512 patent issued, Defendant has had knowledge that the induced acts would
constitute infringement of the ‘512 patent and has specifically intended to cause such
infringement.” (Compl. ¶ 26.) It goes on to assert that “since at least the date the ‘512 patent
issued, Defendant has known that its Suboxone Sublingual Film is especially made or especially
adapted for use in the infringement of one or more claims of the ‘512 patent.” (Id. ¶ 31.)
Finally, the Complaint states that “Defendant’s conduct, including—inter alia—continuing to
knowingly cause widespread direct infringement of the ‘512 patent, and failure to provide a good
faith response or analysis of its non-infringement or invalidity positions in response to licensing
communications, justifies a finding of willful infringement.” (Id. ¶ 33.) Taking these allegations
as true, I can plausibly infer that Defendant’s continued use of the Prescribing Instructions at
issue after learning of the claims of the ‘512 patent was done with objective recklessness of the
infringement risk. Accordingly, I decline to dismiss this claim.
IV.

CONCLUSION
Defendant’s Motion to Dismiss is granted only as to the direct infringement claim against

Indivior. In all other respects, the Motion will be denied. An appropriate Order follows.

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