Marposs Societa Per Azioni et al v. Jenoptik Automotive North America, LLC et al
Filing
46
MEMORANDUM Opinion and Order signed by the Honorable Elaine E. Bucklo on 4/7/2017. Mailed notice. (mgh, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
MARPOSS SOCIETÁ PER AZIONI, et
al.,
Plaintiffs,
v.
JENOPTIK AUTOMOTIVE NORTH
AMERICA, LLC, et al.,
Defendants.
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No. 16 C 9041
MEMORANDUM OPINION AND ORDER
Plaintiffs Marposs Società per Azioni (“Marposs Italy”) and
Marposs Corporation (“Marposs US”) (Marposs Italy and Marposs US
together, “Marposs”) have sued defendants Jenoptik Automotive
North America, LLC (“JANA”) and Jenoptik Industrial Metrology
Germany Gmbh (“JIMG”) (JANA and JIMG together, “Jenoptik,” or
“defendants”) for patent infringement in violation of 35 U.S.C.
§ 271. The defendants have moved to dismiss Marposs’s complaint.
For the reasons discussed below, the motion is denied.1
I.
Marposs is a developer of technology used to measure
grinding machinery and other devices used in workshop
1
The defendants have filed separate motions to dismiss, but
nearly all of the arguments for dismissal have been advanced by
JANA and adopted by JIMG. For simplicity, therefore, I discuss
the filings as a single motion.
environments. On October 9, 2001, Marposs obtained U.S. Patent
No. 6,298,571 (“the ‘571 Patent”) for a device invented by two
of its employees for measuring the dimensions of cylindrical
parts.2 According to Marposs, this represented a significant
technological advance, allowing measurements to be taken more
efficiently and accurately.
The complaint alleges that at some point prior to June
2001, Marposs learned that Etamic SA (“Etamic”), a predecessor
in interest to Jenoptik, had obtained U.S. Patent No. 6,088,924
(“the ‘924 Patent”), covering the same invention. Marposs
initiated an interference proceeding before the U.S. Patent and
Trademark Office (USPTO) and ultimately prevailed. As a result,
Etamic’s ‘924 Patent was canceled and, on October 27, 2009,
Marposs was awarded U.S. Patent No. 7,607,239 (“the ‘239
Patent”).3
Marposs subsequently obtained two additional patents
relating to similar inventions. On October 16, 2012, it obtained
U.S. Patent No. 8,286,361 (“the ‘361 Patent”);4 and on March 11,
2
The ’571 Patent was entitled, “Apparatus for Checking Diametral
Dimensions of Rotating Cylindrical Parts.”
3
The ’239 Patent was entitled, “Apparatus for Checking Diametral
Dimensions of Cylindrical Parts Rotating with an Orbital
Motion.”
4
The ’361 Patent was entitled “Apparatus for Checking Diametral
Dimensions of a Cylindrical Part in Orbital Motion in a
Numerical Control Grinding Machine.”
2
2014, it obtained U.S. Patent No. 8,667,700 (“the ‘700 Patent”).5
All four of the patents -- the ‘571 Patent, the ‘239 Patent, the
‘361 Patent, and the ‘700 Patent -- are incorporated in a device
manufactured and distributed by Marposs called the “Fenar L InProcess Gauging System for Crankshafts” (the “Fenar L System”).6
According to Marposs, the defendants developed a device -the DF500 -- that infringes the patents-in-suit. Marposs alleges
that the defendants displayed the DF500 at the 2010
International Manufacturing Trade Show (“IMTS”) in Chicago.
After the show, Marposs contacted Jenoptik, and Jenoptik agreed
to cease offering the DF500 for sale in the U.S. Jenoptik also
modified its website to indicate that the device was not for
sale in the U.S.
Nevertheless, Marposs alleges, the defendants again used
the DF500 at the 2014 IMTS. According to the complaint, the
defendants not only displayed the device at the show but also
demonstrated its operation to potential customers. Following the
show, Marposs contacted Jenoptik again. It is unclear how, if at
all, Jenoptik responded to the communication.
5
The ’700 Patent was entitled, “Method for Checking the Diameter
of a Cylindrical Part in Orbital Motion.”
6
All of the patents-in-suit, except the ’239, expired on
September 23, 2016.
3
No further problems arose in connection with the DF500
until the defendants again “engaged in marketing activities” in
connection with the DF500 at the 2016 IMTS. In addition, in
March 2016, Fives Landis Corp. and Fives Landis Ltd. (“Fives
Landis”), a manufacturer of grinding machines, issued a request
for proposal to Marposs to supply gauging devices. According to
the complaint, Jenoptik also made a presentation to Fives Landis
featuring the DF500. Marposs alleges that Jenoptik offered to
sell the DF500 at prices below Marposs’s. As a result, Marposs
was forced to lower its prices and ended up losing money.
Marposs’s complaint asserts four infringement claims, one
for each of the patents-in-suit. With respect to each patent,
Marposs alleges that the defendants engaged in direct
infringement, induced infringement, and contributory
infringement. The defendants move pursuant to Fed. R. Civ. P.
12(b)(6) to dismiss all four counts.
II.
For purposes of a Rule 12(b)(6) motion to dismiss, I take
the complaint’s allegations as true and draw all reasonable
inferences in the plaintiff’s favor. See, e.g., Lavalais v.
Village of Melrose Park, 734 F.3d 629, 632 (7th Cir. 2013). “To
survive a motion to dismiss, a complaint must contain sufficient
factual matter, accepted as true, to ‘state a claim to relief
that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S.
4
662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550
U.S. 544, 570 (2007)).
A.
Direct Infringement
The defendants first move to dismiss Marposs’s direct
infringement claims. Direct infringement occurs when a party
“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.” 35 U.S.C. § 271(a).
Marposs contends that the defendants violated the statute by
“using” the DF500 at the IMTS events and also by “offering to
sell” the device to Fives Landis.
1.
Use
The defendants argue that Marposs fails to allege that they
“used” the DF500 within the meaning of § 271(a). They contend
that any conduct at the 2010 IMTS falls outside of the Patent
Act’s six-year limitations period and therefore is not
actionable. They also argue that Marposs’s allegations in
connection with the 2010 IMTS do not constitute “use” within the
meaning of the statute because Marposs claims only that the
defendants brought the device to the show. The defendants
correctly state that mere possession of the device at the show
does not constitute “use” under the statute. See, e.g., Quantum
Grp. Inc. v. Am. Sensor Inc., No. 96 C 0761, 1998 WL 766707, at
*6 (N.D. Ill. Apr. 10, 1998) (“Mere possession of infringing
5
products does not establish liability for infringement.”).
Marposs does not appear to dispute any of defendants’ arguments
with respect to the 2010 IMTS.
The defendants further contend that Marposs’s allegations
regarding the defendants’ demonstration of the device at the
2014 IMTS do not amount to “use” within the meaning of the
statute. Their argument is based on Medical Solutions Inc. v.
Change Surgical LLC, 541 F.3d 1136 (Fed. Cir. 2008). There, the
plaintiff sued the defendant for infringing patents for
technology used to control the temperature of medical and
surgical items. In response to the defendant’s motion to dismiss
for lack of personal jurisdiction, the plaintiff argued that the
defendant had used the infringing device at a trade show in the
District of Columbia. The court disagreed, observing that “[t]he
ordinary meaning of ‘use’ is ‘to put into action or service.’”
Id. at 1141. Although the plaintiff claimed that the
representatives “actively demonstrated the [device’s] actual
functions in use,” the only evidence in support of the
allegation was a declaration averring that a representative had
shown an attendee how to remove a basin from the device. The
court noted that this “f[e]ll short of practicing all of the
elements of any one claim.” Id. at 1141.
In some places, the defendants appear to suggest that
demonstration of an infringing device at a trade show cannot
6
constitute “use” for purposes of § 271 as a matter of law. While
Medical Solutions acknowledged that some courts had previously
ruled to that effect, id. at n.4, it expressly declined to
embrace such an across-the-board rule. Id. at 1141. And indeed,
several courts after Medical Solutions have found that
demonstration of a device at a trade show can constitute “use”
under the statute. See, e.g., C.R. Daniels, Inc. v. Naztec Int’l
Grp., LLC, No. CIV.A. ELH-11-01624, 2011 WL 6026293, at *11 (D.
Md. Dec. 2, 2011); Worldwide Creations, LLC v. Playhut, Inc.,
No. 08-12159, 2009 WL 270088, at *3 (E.D. Mich. Feb. 3, 2009);
Donnelly Corp. v. Reitter & Schefenacker GmbH & Co. KG, 189 F.
Supp. 2d 696, 704 (W.D. Mich. 2002). I likewise decline to hold
that demonstration of an infringing device at a trade show can
never constitute “use” for purposes of § 271.
The defendants argue that Marposs’s “use” claim fails with
respect to the 2014 IMTS because the complaint does not allege
that their demonstration involved use of the DF500 for its
intended purpose (i.e., to check the diameter of a part).
However, Fed. R. Civ. P. 8 does not require plaintiffs to plead
with such specificity. See, e.g., Pierce v. Illinois Dep’t of
Human Servs., 128 F. App’x 534, 536 (7th Cir. 2005) (“A
plaintiff need not plead legal theories nor allege all the facts
necessary to establish the essential elements of a legal theory.
Instead, the plaintiff needs to provide only a short, plain
7
statement of his or her grievance, and the complaint is
sufficient so long as it puts defendants on notice of the of the
claims and the grounds they rest upon, along with some
indication ... of time and place. Thus, dismissal is seldom
appropriate for lack of specificity.”) (quotation marks and
citations omitted). Marposs alleges that the defendants used
“the DF500 device to show potential customers how the device
operates.” Compl. ¶ 35. It can reasonably be inferred that in
showing potential customers how the device operated, the
defendants used the DF500 to check the diameter of a part.
Finally, the defendants argue that even if the
demonstration at the 2014 IMTS constituted a use of the
infringing device, the claim fails because the alleged
infringement is de minimis. Although recognized by a number of
courts, the “de minimis exception” to infringement claims does
not appear to be firmly established. See, e.g., Embrex, Inc. v.
Serv. Eng’g Corp., 216 F.3d 1343, 1352-53 (Fed. Cir. 2000)
(Rader, J., concurring) (“Since its inception, this court has
not tolerated the notion that a little infringement -- de
minimis infringement -- is acceptable infringement or not
infringement at all.”). Moreover, where the exception has been
recognized, its application has been limited. Id. at 1349 (“This
court has construed ... the de minimis exception[] very
narrowly.”). And even where the alleged infringement is de
8
minimis, this is not necessarily fatal to an infringement claim.
See, e.g., Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1299
(Fed. Cir. 2009) (noting that “de minimis infringement can still
be infringement”).
The defendants argue that the infringement alleged by
Marposs is de minimis because it is limited to a single incident
at the 2014 IMTS. They also argue that, since three of the four
patents expired in September 2016, the alleged infringement is
not likely to be repeated. However, the defendants’ alleged
infringement is not limited to their use of the DF500 at the
2014 IMTS. As discussed more fully below, Marposs also alleges
that the defendants violated § 271 by offering the DF500 for
sale. Further, at this stage, I am unable to accept the
defendants’ contention that their alleged infringing conduct is
unlikely to recur. This is especially so in light of the
complaint’s allegations regarding the defendants’ continued
marketing of the DF500 at the 2016 IMTS. The fact that three of
the patents are now expired is irrelevant. So long as one of the
patents remains in effect, the possibility of future
infringement exists.
For these reasons, Marposs has sufficiently alleged that
the defendants committed direct infringement of the patents by
using the DF500.
2.
Offering to Sell
9
Marposs also alleges that the defendants infringed its
patents by offering to sell the DF500 to Fives Landis.
Specifically, Marposs alleges that in 2016, “Jenoptik made a
presentation about the infringing DF500 device to Five Landis in
or around Hagerstown, Maryland in an attempt to obtain the
business for this program.” Compl. ¶ 41. The complaint further
asserts that “Jenoptik indicated that it would sell its
infringing DF500 device to Five Landis at prices lower than
Marposs.” Id.
The defendants argue that these allegations are
insufficient to establish an “offer to sell” within the meaning
of § 271(a). The Federal Circuit has “defined liability for an
‘offer to sell’ under section 271(a) according to the norms of
traditional contractual analysis.” MEMC Elec. Materials, Inc. v.
Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1376 (Fed.
Cir. 2005) (quotation marks omitted). “Thus, the defendant must
communicate a manifestation of willingness to enter into a
bargain, so made as to justify another person in understanding
that his assent to that bargain is invited and will conclude
it.” Id. (brackets and quotation marks omitted). Many courts
have held that this requires that an offer to sell include a
fixed price term. See, e.g., Indag GmbH & Co. v. IMA S.P.A, 150
F. Supp. 3d 946, 966 (N.D. Ill. 2015) (“To constitute an ‘offer
to sell’ under traditional contract principles, an offer
10
requires a definite price term, otherwise the offeree could make
the offer into a binding contract by a simple acceptance.”)
(citing Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246,
1251 (Fed. Cir. 2000)).
According to the defendants, Marposs fails to allege that
they offered to sell the DF500 to Fives Landis at a specific
price. I am not persuaded. As an initial matter, there are
circumstances under which courts have found offers to sell under
§ 271 despite the lack of any fixed price term. See, e.g.,
Rudolph Techs., Inc. v. Camtek Ltd., No. CIV. 15-1246 ADM/BRT,
2015 WL 5039295, at *9 (D. Minn. Aug. 26, 2015) (presentations
constituted offers to sell despite lack of specific price
because purchasing decisions concerning technically
sophisticated products typically involved a lengthy process);
C.R. Daniels, 2011 WL 6026293, at *12 (offer to sell was made at
conference even though no prices were discussed because
attendees had no authority or ability to purchase products at
the time, and because, given the customizable nature of the
product, pricing was not ordinarily discussed at conferences).
Here, Marposs may be understood as alleging that the
defendants essentially offered to undersell Marposs, in which
case the amount of their offer would have been contingent on the
amount of Marposs’s offer. Thus, the defendants may have been
unable to specify a price because Marposs had yet to make its
11
offer, or because they were unaware of Marposs’s asking price.
Under these circumstances, the lack of a fixed price would be
attributable to the nature of the offer itself and would not
betoken a lack of intent to enter into a bargain.
Further, even if Marposs can prevail on its direct
infringement claim only by establishing that the defendants
offered to sell the DF500 at a specific price, it does not
follow that Marposs is required to plead this in its complaint.
As previously noted, plaintiffs are not required to allege facts
in support of the elements of their claims. Pierce, 128 F. App’x
at 536. The facts alleged in Marposs’s complaint suffice to
establish a willingness on the defendants’ part to enter into a
bargain with Fives Landis. Under these circumstances, the claim
is not defeated by the mere fact that the complaint does not
allege that the defendants offered to sell the DF500 at specific
price.
Finally, in addition to alleging that the defendants used
and offered to sell the DF500, Marposs’s complaint asserts that
the defendants manufactured and/or imported the DF500 in the
United States. See Compl. ¶ 27 (“As described above, [JIMG]
manufactures, imports, uses, sells, and/or offers for sale the
infringing DF500 device in and/or into the United States, and
[JANA] imports, uses, sells, and/or offers for sale the
infringing DF500 device in and/or into the United States.”).
12
Like using and offering to sell, manufacturing and importing
constitute infringing conduct under § 271(a). See 35 U.S.C. §
271 (“[W]hoever 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.”). Thus, even
if Marposs’s direct infringement claim otherwise failed, it has
stated a claim under the statute’s “makes” and “imports” prongs.
3.
Group Pleading
JIMG separately argues that the complaint should be
dismissed because its allegations fail to distinguish between
JIMG and JANA. JIMG cites several places in the complaint where
the defendants are referred to collectively as “Jenoptik” and
where, consequently, the complaint “does not specify which
entity is attributable to each act.” JIMG Reply Br. at 9.
Such so-called “group pleading” does not violate Fed. R.
Civ. P. 8 so long as the complaint provides sufficient detail to
put the defendants on notice of the claims. See, e.g., Sanders
v. JGWPT Holdings, Inc., No. 14 C 9188, 2016 WL 4009941, at *10
(N.D. Ill. July 26, 2016) (“‘Group pleading’ that refers to
‘Defendants’ collectively is sufficient under Rule 8 when a
plaintiff provides enough detail about the nature of the
allegations to put each defendant on fair notice of the
claims.”).
13
Here, Marposs’s complaint provides the defendants with
sufficient notice of the claims brought against them. On
inspection, the examples of group pleading cited by JIMG turn
out to be unproblematic. For instance, JIMG points out that the
complaint alleges that “Jenoptik” had notice of Marposs’s
patents by virtue of Etamic’s participation in the interference
proceedings before the USPTO. According to JIMG, this leaves
unclear whether JIMG or JANA, or both defendants, are alleged to
have had notice of the patents. When read as a whole, however,
the complaint makes clear that both entities are alleged to have
had knowledge of Marposs’s patents. See, e.g., Compl. ¶ 41 (“On
information and belief, notwithstanding their knowledge of the
Marposs patents, Marposs’s positions and Jenoptik’s prior
assertions withdrawing the product from the United States,
Jenoptik made a presentation about the infringing DF500 device
to Five Landis.”) (emphasis added). JIMG argues that “JIMG and
JANA cannot both be a predecessor-in-interest to a company.”
JIMG Reply Br. at 8. But Etamic is alleged to have been JIMG’s
and JANA’s predecessor in interest, not vice versa.
JIMG also points to the allegation that Jenoptik is
“importing, making, using, selling and/or offering to sell ...
the DF500 device.” Compl. ¶ 47. According to JIMG, this creates
confusion because it suggests that both defendants are makers of
the device, whereas the complaint elsewhere alleges that only
14
JIMG is the device’s manufacturer. Again, the complaint’s
allegations are perfectly intelligible when read as a whole.
Paragraph 47 alleges multiple ways in which the defendants have
directly infringed Marposs’s patents. Since JIMG is elsewhere
identified as the only manufacturer of the device, paragraph
47’s reference to manufacturing can naturally be understood as
applying only to JIMG. The other acts of infringement alleged in
the paragraph can be understood as applying to both defendants.
In short, Marposs’s “group pleading” is not a basis for
dismissing the complaint. Since the defendants’ other arguments
for dismissal likewise fail, their motion is denied insofar as
Marposs’s direct infringement claims are concerned.
B.
Indirect Infringement
Section 271 prohibits two forms of indirect infringement:
inducing infringement under § 271(b), and contributory
infringement under § 271(c). Marposs asserts both theories with
respect to each of the four patents. I consider each theory
separately below.
1.
Inducement of Infringement
“Under Section 271(b), ‘[w]hoever actively induces
infringement of a patent shall be liable as an infringer.’” Goss
Int’l Americas, Inc. v. Graphic Mgmt. Assocs., Inc., 739 F.
Supp. 2d 1089, 1115 (N.D. Ill. 2010) (quoting 35 U.S.C. §
271(b)). “To prove inducement of infringement, a patentee must
15
show both: (1) direct infringement, and (2) that the alleged
infringer knowingly induced infringement and possessed specific
intent to encourage another’s infringement.” Id.
Marposs has stated a claim for inducing infringement. The
complaint alleges that by “developing, marketing, advertising
and/or providing the DF500 device” to their customers, the
defendants induced them to use the infringing DF500 device. See,
e.g., Compl. ¶¶ 51, 64, 75.
The defendants contend that Marposs’s inducement claim
fails because the complaint does not allege direct infringement
by a third party. I disagree. The complaint specifically alleges
that, as a result of the defendants’ actions, third parties -including the defendants’ customers -- have directly infringed
each of the patents. See, e.g., Compl. ¶¶ 51 & 52 (’571 patent);
id. ¶¶ 64 & 65 (’239 patent); id. ¶¶ 75 & 76 (’361 patent); id.
¶¶ 86 & 87 (’700 patent). It is true that Marposs does not
identify any third-party infringers by name, but there is no
requirement that Marposs do so.
The defendants also argue that the inducement claim must be
dismissed because they cannot be held liable for direct and
indirect infringement based on the same actions. Their argument
is based chiefly on Johnson Products Co. v. Pro-Line Corp., No.
94 C 3555, 1998 WL 699024 (N.D. Ill. Oct. 5, 1998). There, the
plaintiff alleged claims for both direct and induced
16
infringement. The court held that the inducement claim failed
because the actions on which it was based (i.e., providing
customers with instructions concerning how to use the product)
were “subsumed” by those on which the direct claim was based
(the plaintiff’s manufacture of the infringing product). Id. at
*15. The defendants similarly argue that the conduct on which
Marposs’s inducement claim is based (encouraging customers to
use the DF500) are subsumed by those on which the direct
infringement claim is based (i.e., selling the DF500 to
customers).
Marposs addresses this argument only in a footnote in its
response brief. Although the issue is a closer one than Marposs
apparently recognizes, I decline to dismiss its inducement
claim. At this stage, the precise nature of Marposs’s direct and
induced infringement claims has yet to be fleshed-out, and it is
not possible to determine to what extent the actions on which
the latter claim is based are distinct from those on which the
former is based. Notably, Johnson was decided at the summaryjudgment stage. As a result, the bases for the plaintiff’s
direct and induced infringement claims were readily discernable.
At the pleading stage, however, courts have allowed plaintiffs
to plead both claims. See, e.g., Datascape, Inc. v. Kyocera
Wireless Corp., No. 1:05-CV-1651-CC, 2006 WL 8411935, at *8
(N.D. Ga. Sept. 12, 2006) (“[T]he Court cannot say at this early
17
stage that Datascape can prove no set of facts that would
entitle it to relief based on theories of both direct
infringement and indirect infringement.”); Pickholtz v. Rainbow
Techs., Inc., 260 F. Supp. 2d 980, 990 (N.D. Cal. 2003) (direct
and indirect infringement claims were not mutually exclusive
where direct claim was based on defendant’s making and use of
its products and indirect claim was based on defendant’s sales
of its products to customers); see also Pecorino v. Vutec Corp.,
934 F. Supp. 2d 422, 450–51 (E.D.N.Y. 2012) (plaintiffs need not
elect between theories of direct infringement and inducing
infringement prior to trial so long as each claim is adequately
pleaded). In short, the question whether the direct and induced
infringement claims are based on the same conduct is best
addressed after the factual record has been developed.
Accordingly, I conclude that Marposs has adequately alleged
a claim for induced infringement.
2.
Contributory Infringement
Lastly, Marposs alleges that the defendants are liable for
contributory infringement under § 271(c). “To establish
contributory infringement, the patent owner must show the
following elements...: 1) that there is direct infringement, 2)
that the accused infringer had knowledge of the patent, 3) that
the component has no substantial noninfringing uses, and 4) that
18
the component is a material part of the invention.” Fujitsu Ltd.
v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010).
Marposs alleges that the defendants have “contributed and
continue[] to contribute to the infringement of the [patents] by
third parties, who use or import the DF500 device into the
United States, by promoting, advertising, and marketing the
DF500 device ... and by providing the necessary equipment and
related documentation to third parties to operate the infringing
device.” Compl. ¶ 53. The complaint additionally alleges that
JIMG has contributed to direct infringement by JANA. See, e.g.,
Compl. ¶ 54. These allegations are adequate to state claims for
contributory infringement as to each of the patents.
The defendants contend that the contributory infringement
claims fail because the complaint does not allege that the DF500
was incorporated into another party’s infringing product. That
is incorrect. The complaint alleges that the DF500 was used with
the grinding machines used by various third parties. Compl. ¶¶
51-52; 64-65; 75-76; 86-87. The defendants argue that this is
not sufficient because the complaint does not specifically
allege that the grinding machines are infringing products.
However, the complaint alleges that the defendants have
contributed, and continue to contribute, to the infringement of
the patents. When the complaint is viewed in the light most
favorable to Marposs, it can be understood as alleging that the
19
grinding machines or other products into which the DF500 has
been incorporated are infringing products.
The defendants also argue that the complaint fails to
allege that they engaged in any of the acts listed in § 271(c)
as bases for contributory infringement claims. According to the
defendants, Marposs alleges that the defendants have engaged in
contributory infringement only by promoting, advertising, and
marketing the DF500 and by providing the necessary equipment and
related documents. As already noted, however, the complaint also
alleges that the defendants imported the DF500 device, Compl. ¶¶
4-5, and importing is included among the forms of conduct
proscribed by 271(c).
Finally, defendants contend that the DF500 cannot be the
basis for both contributory and direct infringement claims. In
support, they cite Pickholtz v. Rainbow Technologies, Inc., 260
F. Supp. 2d 980 (N.D. Cal. 2003). However, Pickholtz, like
Johnson, held that direct and indirect claims cannot be based on
the same action; it did not hold that direct and indirect claims
cannot be based on the same device. And in any case, the
defendants’ invocation of this line of cases fails here for the
same reason that it failed in connection with Marposs’s
inducement claim: at this juncture, it is too early to determine
whether there is any set of facts under which Marposs might be
able to prevail on both its direct and contributory infringement
20
claims. See, e.g., Datascape, 2006 WL 8411935, at *8; Pickholtz,
260 F. Supp. 2d at 990.
Thus, Marposs has stated a claim for contributory
infringement with respect to each of the patents.
CONCLUSION
For the reasons discussed above, the defendants’ motion to
dismiss is denied.
ENTER ORDER:
Elaine E. Bucklo
United States District Judge
Dated: April 7, 2017
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