Zond, Inc. v. Fujitsu Limited et al

Filing 57

Judge William G. Young: ORDER entered. MEMORANDUM AND ORDER: Fujitsu's motion to dismiss this claim is DENIED, ECF No. 26 .(Paine, Matthew)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

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ZOND, INC.,
Plaintiff,
v.

FUJITSU SEMICONDUCTOR LIMITED,
FUJITSU SEMICONDUCTOR AMERICA,
INC., TAIWAN SEMICONDUCTOR
MANUFACTURING COMPANY, LIMITED,
TSMC NORTH AMERICA CORP.,
Defendants.

CIVIL ACTION
NO. 13-11634-WGY

YOUNG, D.J.

January 09, 2014

MEMORANDUM AND ORDER
At a motion session on November 26, 2013, this Court heard
two

motions

regarding

Zond,

Inc.’s

complaint for patent infringement.

(“Zond”)

second

amended

Second Am. Compl. Patent

Infringement (“2nd. Am. Compl.”), ECF No. 19.

The Court heard a

joint motion to dismiss, filed by Fujitsu Semiconductor Ltd.
(“Fujitsu
(“Fujitsu
dismiss

Ltd.”)
USA”)

filed

and

Fujitsu

(jointly,

by

Taiwan

Semiconductor

“Fujitsu”),
Semiconductor

and

a

America,
joint

Manufacturing

Inc.,

motion

to

Company,

Ltd., TSMC North America Corporation, TSMC Development, Inc.,

1

and Wafertech, LLC (jointly, “TSMC”).1
Ltd.,

&

Fujitsu

(“Fujitsu’s

Mot.

Semiconductor
Dismiss”),

Fujitsu Semiconductor

America,

ECF

No.

Inc.’s

26;

Mot.

Mot.

Dismiss

Dismiss

Defs.

Taiwan Semiconductor Mfg. Co. Ltd., TSMC North America Corp.,
TSMC

Development,

Inc.,

Dismiss”), ECF No. 32.

&

Wafertech,

LLC

(“TSMC’s

Mot.

After hearing counsel on these motions

the Court entered an order dismissing, without prejudice, Zond’s
willful
otherwise

infringement
denied

claims

TSMC’s

against

motion

advisement Fujitsu’s motion.

to

all

dismiss,

defendants,
and

took

but
under

Elec. Clerk’s Notes, ECF No. 48.

Having had the opportunity further to consider Fujitsu’s
motion to dismiss, for the reasons stated below, this Court
GRANTS Fujitsu’s motion insofar as Zond seeks to recover for
alleged pre-filing knowledge, but otherwise DENIES their motion
I.

ANALYSIS
Federal Rule of Civil Procedure 8(a) (“Rule 8(a)”) requires

the plaintiff state a claim upon which relief can be granted.
See Fed. R. Civ. P. 8(a)(2).

For the reasons articulated below,

Zond has – just barely - met this requirement.

1

Since the filing of the motion to dismiss the claims
against both TSMC Development, Inc. and Wafertech, LLC have been
dismissed without prejudice. Stipulation Dismissal Without
Prejudice Defs. TSMC Development, Inc., & Wafertech, LLC, ECF
No. 47.
2

A.

Improper Group Pleading

Fujitsu argues that Zond’s decision to treat Fujitsu Ltd.
and Fujitsu USA as an “undifferentiated mass” and to make all
allegations against the group as a whole fails to notify the
separate defendants of the specific allegations against them.
Fujitsu

Semiconductor

Ltd.

&

Fujitsu

Semiconductor

America,

Inc.’s Mem. Law Supp. Their Mot. Dismiss (“Fujitsu Mem. Supp.
Mot.”) 5, 7-8, ECF No. 27; Fujitsu Semiconductor Ltd. & Fujitsu
Semiconductor America, Inc.’s Reply Mem. Law Supp. Their Mot.
Dismiss (“Fujitsu Reply Mem. Supp. Mot.”) 2, ECF No. 38.
Whilst a pleading, group or otherwise, must be sufficiently
clear to put the defendants on notice as to “who did what to
whom, when, where and why”, Educadores Puertorriqueños en Acción
v. Hernández, 367 F.3d 61, 68 (1st Cir. 2004), group pleadings
are not, prima facie, excluded by Rule 8(a).

At the motion to

dismiss stage a complaint generally will only be dismissed where
it

is

“entirely

implausible”

or

impossible

defendants to have acted as alleged.

for

the

grouped

GMO Trust ex rel. GMO

Emerging Country Debt Fund v. ICAP PLC, No. 12-10293-DPW, 2012
WL 5197545, at *8 (D. Mass. Oct. 18, 2012) (Woodlock J.); see
also Automated Transaction LLC v. New York Cmty. Bank, No. 12CV-3070(JS)(ARL), 2013 WL 992423, at *4 (E.D.N.Y. Mar. 13, 2013)
(“each defendant [must have] fair notice of the claims against
it” (quoting Holmes v. Allstate Corp., No. 11-CV1543(LTS)(DF),
3

2012

WL

627238,

at

*22

(S.D.N.Y.

Jan.

27,

2012)

report

and

recommendation adopted, 11-CIV-1543 (LTS) (DCF), 2012 WL 626262
(S.D.N.Y. Feb. 27, 2012), appeal dismissed (Apr. 23, 2012)).
Zond
willfully

alleges

that

infringing,

patents-in-suit.

“Fujitsu”

and

See

is

inducing

the

infringement

2nd

Am.

generally

directly

infringing,
of,

Compl.

the

These

allegations, as made in the filed second amended complaint, are
facially plausible – it is not impossible for both Fujitsu USA
and Fujitsu Ltd. to have engaged in each of the acts alleged by
Zond.

Though it may be a stretch for the court to infer that

“both

parent

’design[]

and

[Fujitsu

Ltd.]

develop[]

…

and

[the

subsidiary

same]

[Fujitsu

semiconductor

USA]

products’

made by Taiwan-based TSMC,” Fujitsu Reply Mem. Supp. Mot. 3
(third, fourth, and fifth alterations original), and it is not
for the Court to evaluate, at this stage, whether the plaintiff
will

be

claims.

able
See

to

obtain

Hague

v.

the

necessary

Massachusetts

evidence
Dep’t

of

to

prove

its

Elementary

&

Secondary Educ., Nos. 10–30138 DJC, 10–30142 DJC, 10–30143 DJC
10–30144 DJC, 2011 WL 4073000, at *3 (D. Mass. Sept. 12, 2011)
(Casper, J.).

Furthermore, determining the exact operations of

the Fujitsu corporate group, and thus the relevant assignment of
potential

liability,

requires

corporate

structure

that is not readily available to the public.
illogical

to

allow

Fujitsu

potentially
4

to

information

It would seem
escape

liability

because

of

its

ability

to

keep

its

corporate

structure

confidential.
Further,
amended

complaint

provides
claim

despite

each

alleged

making

against

individual
against

all

the

Fujitsu

defendant

it.

allegations

in

the

corporate

with

Unlike

in

fair

group,

notice

Automated

second

of

Zond
each

Transaction,

where the plaintiff did not consistently group the defendants
together when making allegations, 2013 WL 992423, at *4, the
consistency of the subject of the pleading in this case, despite
its group format, means that it can be reasonably inferred that
each

and

every

allegation

is

made

against

each

individual

defendant.
B.

Direct Infringement 35 U.S.C. Section 271(g)

Pursuant to Federal Rule of Civil Procedure 8(a)(2) (“Rule
8(a)(2)”) a pleading must contain a “short and plain statement
of the claim showing that the pleader is entitled to relief”.
Fed. R. Civ. P. 8(a)(2).

Fujitsu states that for a claim to

satisfy Rule 8(a)(2) it must be plead in accordance with the
standard

outlined

in

v.

Ashcroft

Iqbal,

556

U.S.

662,

678

(2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007), and Zond’s claim of direct infringement fails to meet
this standard.

Fujitsu Mem. Supp. Mot. 4-5.

Zond, however,

contends that a direct infringement complaint will be adequately
plead where it meets the requirements of Form 18 of the Federal
5

Rules of Civil Procedure (“Form 18”). Pl. Zond’s Opp’n. Fujitsu
Semiconductor Ltd. & Fujitsu Semiconductor America, Inc.’s Mot.
Dismiss (“Reply”) 6, ECF No. 35.

This Court, in accordance with

the case law, concludes that the correct pleading standard for a
direct

infringement

claim

is,

as

argued

by

Zond,

that

demonstrated by Form 18.
The

standard

reconciled

with

required

the

Twombly and Iqbal.

by

judgments

of

Form

18

the

cannot

Supreme

be

Court

easily
in

both

See e.g., Tyco Fire Prods. LP v. Victaulic

Co., 777 F. Supp. 2d 893, 905 (E.D. Pa. 2011) (“Put simply, the
forms

purporting

to

illustrate

what

level

of

pleading

is

required do not reflect the sea change of Twombly and Iqbal.”);
Elan Microelecs. Corp. v. Apple, Inc., No. C 09–1531 RS, 2009 WL
2972374, at *2 (N.D. Cal. Sept. 14, 2009).

However, despite

this conflict, Federal Rule of Civil Procedure 84 provides that
“[t]he forms in the Appendix suffice under [the Federal Rules of
Civil Procedure].”

Fed. R. Civ. P. 84.

This indicates that

Form 18 ought prevail, a conclusion supported by the Supreme
Court’s

comments

in

Leatherman

v.

Tarrant

Cnty.

Narcotics

Intelligence & Coordination Unit, 507 U.S. 163 (1993), that any
amendments to the Federal Rules of Civil Procedure “must be
obtained by the process of amending the Federal Rules, and not
by judicial interpretation.”

Id. at 168; see also Twombly, 550

U.S. at 569 n.14 (acknowledging that altering the Federal Rules
6

of

Civil

Procedure

interpretation).
the

standard

relevant

cannot

be

accomplished

by

judicial

Thus, where there is a relevant appended form,

provided

it

is

ought

complaints

by

the

standard

be

evaluated.

by

See

which

e.g.,

all

K-Tech

Telecomm. v. Time Warner Cable, Inc., 714 F.3d 1277, 1283-84
(Fed. Cir. 2013); In re Bill of Lading Transmission & Processing
Sys. Patent Litig., 681 F.3d 1323, 1333-36 (Fed. Cir. 2012);
Select Retrieval, LLC v. Bulbs.com Inc., No. 12-10389-TSH, 2012
WL 6045942, at *3 (D. Mass. Dec. 4, 2012) (Hillman, J.).
Form

18,

an

example

of

a

direct

patent

infringement

complaint included in the Appendix to the Federal Rules of Civil
Procedure, requires a pleading equivalent to:
(1) an allegation of jurisdiction; (2) a statement
that the 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.

Bill

of

Lading,

681

F.3d

at

1334

(quoting

McZeal

v.

Sprint

Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007)).
Zond

alleges

that

Fujitsu

has

directly

infringed

the

patents-in-suit pursuant to 35 U.S.C. section 271(g) (“section
271(g)”).
93.

See e.g., 2nd Am. Compl. ¶¶ 51, 58, 65, 72, 79, 86,

Infringement

under

section

271(g)

is

a

form

of

direct

patent infringement, see Guzik Technical Enters. Inc. v. Western

7

Digital Corp., No. 11-CV-03786-PSG, 2011 WL 6013006, at * 2
(N.D. Cal. Dec. 2, 2011), and therefore the relevant pleading
standard is that required by Form 18.

In its complaint, Zond

alleges: (1) that this Court has jurisdiction, 2nd. Am. Compl.
¶¶ 7-11; (2) that Zond is the owner of the patents-in-suit, id.
¶¶ 13-19; and (3) that Fujitsu has been infringing the patentsin-suit

by

“using,

offering

to

sell

and

selling

within

the

United States, and importing into the United States, without
authority, the Infringing Products.”
58, 65, 72, 79, 93.

Id. ¶ 51; see also id. ¶¶

Further, in the prayer for relief of the

second amended complaint, Zond makes a demand for damages and an
injunction,

id.

at

37;

and

notice

by

Zond

regarding

the

infringement may be inferred from the filing of the complaint,
see, e.g., Telecomm Innovations, LLC v.

Ricoh Co., Ltd., No.

12-1277, 2013 WL 4017096, at *2 (D. Del. Aug. 6, 2013); Aeritas,
LLC v. Alaska Air Grp., Inc., 893 F. Supp. 2d 680, 683-84 (D.
Del. 2012).

Zond has thus met the pleading requirements of Form

18.
C.

Induced Infringement 35 U.S.C. Section 271(b)

Fujitsu asserts that Zond has failed to plead properly a
claim

of

induced

infringement.

Fujitsu

Mem.

Supp.

Mot.

8.

Specifically, Fujitsu alleges that any and all allegations made
concerning

this

claim

are

speculative

plausible claim of induced infringement.
8

and

do

not

support

Id. at 8, 13, 14.

a
In

contrast,

Zond

alleges

that

its

second

amended

complaint

contains a plausible claim of induced infringement, adequately
pleading

both

pre-filing

intent and encouragement.
1.

and

post-filing

knowledge,

specific

Reply 9-19.

Standard

Twombly articulates the relevant standard for pleading an
indirect patent infringement claim.

Bill of Lading, 681 F.3d at

1336-37; Automated Transaction, 2013 WL 992423, at *4.

To

comply with this standard and survive a motion under Federal
Rule

of

Civil

Procedure

12(b)(6)

(“Rule

12(b)(6)”),

the

complaint must allege sufficient facts to demonstrate a facially
plausible entitlement to relief.

See, e.g., Grajales v. Puerto

Rico Ports Auth., 682 F.3d 40, 44 (1st Cir. 2012); RodríguezOrtiz v. Margo Caribe, Inc., 490 F.3d 92, 95 (1st Cir. 2007).
Whilst

detailed

factual

allegations

are

not

necessary,

the

complaint must contain “more than a rote recital of the elements
of a cause of action.”

Rodríguez-Reyes v. Molina-Rodríguez, 711

F.3d 49, 53 (1st Cir. 2013); see also Shay v. Walters, 702 F.3d
76, 82 (1st Cir. 2012).

In considering a motion to dismiss,

however, the court should accept “as true all well-pleaded facts
in the complaint and draw all reasonable inferences in favor of
the plaintiffs.”

Gargano v. Liberty Int’l Underwriters, Inc.,

572 F.3d 45, 48 (1st Cir. 2009) (citing Fitzgerald v. Harris,
549 F.3d 46, 52 (1st Cir. 2008)).
9

2.

The Knowledge Element of Induced Infringement

A person or entity which “actively induces infringement of
a patent [will] be liable as an infringer.”

35 U.S.C. § 271(b).

To establish inducement the plaintiff must show that the alleged
inducer: “[1] knew of the patent, [2] knowingly induced the
infringing

acts,

and

[3]

possessed

a

specific

encourage another’s infringement of the patent.”

intent

to

Vita-Mix Corp.

v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009)
(citing DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304-05 (Fed.
Cir. 2006) (en banc in relevant part)); see also Global-Tech
Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011); Bill
of Lading, 681 F.3d at 1339.

Further,

as

actual

knowledge

of

the purported infringement is necessary to establish a claim of
induced

infringement,

where

the

alleged

inducer

is

not

the

primary infringer the alleged inducer must have had knowledge of
the patent in question combined with an intent to cause the
infringing acts, for example, by providing third-parties with a
product which does not have any substantial non-infringing uses.
See, e.g., Hughes Aircraft Co. v. National Semiconductor Corp.,
857 F. Supp. 691, 699-700 (N.D. Cal. 1994).
Must the alleged inducer have this knowledge prior to the
filing of the suit or can the filing of the suit itself trigger
the knowledge if the alleged misconduct continues?
contentious

issue,

and

one

of
10

first

impression

This is a
before

this

court.2

Little guidance is to be had from other districts, which

are relatively evenly divided on this question.

One school of

thought holds that there is “no legal impediment to having an
indirect infringement cause of action limited to post-litigation
conduct,” Apeldyn Corp. v. Sony Corp., 852 F. Supp. 2d 568, 573
(D. Del. 2012), and consequently that the defendant’s knowledge,
“provided by the filing of the lawsuit [will] satisf[y] the
knowledge element for indirect infringement.”

Rembrandt Social

Media, LP v. Facebook, Inc., No. 1:13cv158, 2013 WL 2950342, at
*4 (E.D. Va. June 12, 2013).
required

pre-filing

infringement.

In contrast, other courts have

knowledge

See, e.g.,

for

a

claim

of

induced

Proxyconn Inc. v. Microsoft Corp.,

No. 11–1681DOC(ANx), 2012 WL 1835680, at *5–6 (C.D. Cal. May 16,
2012); Brandywine Commc'ns Techs., LLC v. T-Mobile USA, Inc.,
904 F. Supp. 2d 1260, 1267-68 (M.D. Fla. 2012).
a.
Central

to

Post-Filing Knowledge
the

argument

that

post-filing

knowledge

is

sufficient to establish an induced infringement is the need for
efficiency in court proceedings.

See Proxyconn Inc., 2012 WL

1835680, at *7 (“[S]ome courts urge [that] the interests of
judicial economy favor denying a motion to dismiss.”) (quotation

2

This issue has been considered by a court in this
district. In that case, however, the judge was not required to
decide on this issue and consequently all statements are obiter
dicta. See Select Retrieval, 2012 WL 6045942, at *5-6.
11

marks

omitted).

That

there

is

“no

substantive

difference

between (i) a putative infringer learning of a patent from a
plaintiff’s letter a day . . . before an infringement suit is
filed or served, and (ii) a putative infringer learning of the
patent from the filing or service of a complaint,” Rembrandt
Social

Media,

conclusion

2013

that

WL

2950342,

post-filing

at

*4,

knowledge

lends
of

itself

the

to

the

patent-in-suit

ought be sufficient, though damages would accrue only once the
putative infringer learned of the patent.

A defendant ought not

be able to avoid liability for induced infringement where it
continues to promote infringement of the patent-in-suit after
obtaining knowledge of its existence “simply because it happened
to learn of the patent in connection with a lawsuit.”

Id.

(quoting Intellect Wireless Inc. v. Sharp Corp., No. 10 C 6763,
2012

WL

787051,

at

*11

(N.D.

Ill.

Mar.

9,

2012))

(internal

quotation marks omitted).
b.
Those

Pre-Filing Knowledge

decisions

that

require

a

claim

of

induced

infringement to include pre-filing knowledge of the patent-insuit dispute the reality of this alleged efficiency, reasoning
that the efficiency obtained is somewhat of a false economy, and
that

the

argument

gives

“too

little

weight

to

the

judicial

inefficiencies and parties' expenses in litigating potentially
meritless

claims.”

Proxyconn

Inc.,
12

2012

WL

1835680,

at

*7

(foreseeing the situation where induced infringement is alleged
based

upon

post-suit

knowledge,

the

conduct

is

ceased

upon

notice at filing, yet a motion to dismiss could not be granted).
These decisions also cite the Supreme Court’s ruling in
Global-Tech Appliances, 131 S. Ct. at 2068, that a claim for
induced infringement requires “knowledge of the existence of the
patent

that

is

infringed,”

and

argue

that

holding

that

a

complaint provides sufficient knowledge vitiates this explicit
requirement.

Brandywine

Communications

Technologies,

LLC

v.

Casio Computer Co., Ltd., 912 F. Supp. 2d 1338, 1346 (M.D. Fla.
2012); see also T-Mobile USA, 904 F.Supp. 2d at 1268-1269.
post-filing

knowledge

is

sufficient

then

all

complaints

If
will

automatically satisfy this requirement upon filing, and it would
be superfluous.
Finally, Federal Rule of Civil Procedure 11(b)(3) requires
that factual contentions made in a pleading have “evidentiary
support.”
perceive

Fed.
how

R.

a

Civ.

P.

plaintiff,

11(b)(3).
when

It

relying

is
upon

difficult

to

post-filing

knowledge to satisfy the requirements of a claim of induced
infringement, can have any evidentiary support for its claim at
the time of filing.
Whilst as a practical matter the argument for post-filing
knowledge

makes

considerable

sense,

given

the

ethical

requirements of the Federal Rules of Civil Procedure, pre-filing
13

knowledge of the patent must be established before a claim of
induced infringement may succeed.

This requirement, however,

would not prevent a plaintiff from filing and then subsequently
amending its filing were the defendant to continue to induce
others to infringe, though any damages would be confined to
conduct after the filing of the complaint.
3.
This

Application in this Case

Court

concludes

that

the

arguments

requiring

pre-

filing knowledge are more persuasive, as there is no bar to a
plaintiff subsequently amending a complaint to include a claim
of

induced

infringement

where

the

defendant,

upon

obtaining

knowledge through the filing of the lawsuit, of the patent and
the

alleged

inducement.

direct

infringement

of

others,

does

not

cease

It must be noted, however, that any damages would

be confined to post-filing conduct.
a.

Pre-Filing

Here, Fujitsu is not alleged to be the primary infringer;
rather,

TSMC

makes

products

which

allegedly

infringe

the

patents-in-suit and these are then incorporated by Fujitsu in
the

products

which

it

manufactures.

2nd

Am.

Compl.

¶

28.

Consequently, for Zond to state a claim of induced infringement
against Fujitsu it must allege both knowledge of the patent and
knowledge of TSMC’s use of the patented processes.

Whilst Zond

alleges that Fujitsu had pre-filing knowledge of the patent, see
14

Id.

at

¶

36,

allegations

the

second

concerning

infringement

of

the

amended

complaint

Fujitsu’s

patents.

contains

knowledge

Further,

the

of

no

TSMC’s

allegation

that

“unique manufacturing processes had to be developed by or for
Fujitsu that . . . employ Zond’s patented technology,” id. ¶ 28,
does not provide any factual basis from which Fujitsu’s actual
pre-filing knowledge may be inferred.

Zond does not allege pre-

filing knowledge of the patent and its use sufficient to support
a pre-filing willful infringement claim and therefore this Court
GRANTS

Fujitsu’s

motion

to

dismiss

the

pre-filing

induced

complaint

against

infringement claim, ECF No. 26.
b.
Zond
Fujitsu.
inferred

has,

Post-Filing

however,

twice

amended

its

Knowledge of the patent and TSMC’s conduct may be
from

the

filing

and

serving

of

the

second

amended

complaint, see e.g., Rembrandt Social Media, 2013 WL 2950342, at
*4-5; Casio Computer Co., 912 F. Supp. 2d at 1346.
original

pleading

could

not

have

satisfied

the

Whilst the
knowledge

requirement, as Zond has amended its complaint, Fujitsu’s postcomplaint knowledge of the patents-in-suit and their use by TSMC
properly may be inferred.

15

c.

Inducement

For Zond to sufficiently plead the inducement requirement
of 35 U.S.C. section 271(b) it must allege that Fujitsu “induced
[a third party’s] infringing acts and that [Fujitsu] knew or
should

have

known

infringements.”

DSU

[its]
Med.

actions

Corp.,

471

would
F.3d

induce
at

1306

actual
(quoting

Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544,
553 (Fed. Cir. 1990)); see also Golden Blount, Inc. v. Robert H.
Peterson Co., 438 F.3d 1354, 1364 n.4 (Fed. Cir. 2006) (holding
that intent, sufficient to meet this standard, could be inferred
from a combination of knowledge of the patent and a direction to
third parties to perform acts which would necessarily have lead
to infringement).

Zond’s allegations of inducement, however,

are entirely conclusory,3 and the second amended complaint fails
to

furnish

any

conclusions.
procedural

factual

information

which

would

support

its

In spite of this lack of particularity, given the

posture

under

which

this

motion

proceeds,

it

is

reasonable to infer that Fujitsu knew its conduct, for example,
by selling infringing products, 2nd Am. Compl. ¶¶ 52, 59, 66,

3

Zond’s allegations consist of barely more than the
statement that Fujitsu is “knowingly and with intent, actively
encouraging
its
customers,
suppliers,
original
equipment
manufacturers . . . to use, sell, offer for sale, and import
Fujitsu’s Infringing Products in a manner that constitutes
infringement of one or more claims of the . . . Patent.”
2nd
Am. Compl. ¶ 52.
16

73, 80, 87, 94, would induce actual infringement.

The patents-

in-suit are process patents, and therefore any and all uses of
products

made

using

these

processes

(“Infringing

would constitute an infringement of the patent.
Consequently,
Infringing

in

this

Products

matter,

would

relevant patent-in-suit.

all

amount

third-party

to

an

Products”)

Id. ¶¶ 25-37.
uses

of

the

infringement

of

the

Given this, Fujitsu’s (post-filing)

knowledge of the patents-in-suit and thus knowledge that any
third-party’s use of its Infringing Products would constitute
infringement, and Fujitsu’s subsequent conduct it is reasonable
to infer, and this stage in the proceeding, that Fujitsu had the
requisite intent to induce infringement.
d.

Intent to Encourage Infringement

The more difficult issue is whether intent to encourage
infringement

may

also

be

inferred

from

Fujitsu’s

post-filing

knowledge of both the existence of the patents-in-suit and their
use.

Zond’s sole allegation regarding encouragement is that

Fujitsu, through “advertising, marketing and sales activity,”
entices its original equipment and design manufacturers to use
the allegedly infringing products.
66, 73, 80, 87, 94.
¶

52,

it

seems

2nd Am. Compl. ¶¶ 52, 59,

Whilst a conclusory pleading, see e.g., id.

illogical

that

17

the

production,

for

sale,

of

goods, for which there is no potential non-infringing use,4 would
not permit a reasonable inference, especially at the motion to
dismiss

stage

that

the

encourage infringement.

manufacturer/importer

intended

to

See, e.g., Lucent Technologies, Inc. v.

Gateway, Inc., 580 F.3d. 1301, 1321-23 (Fed. Cir. 2009); VitaMix Corp., 581 F.3d at 1329; DSU Med. Corp., 471 F.3d at 1306.
Thus, for the above reasons Zond has sufficiently stated a
claim for post-filing induced infringement and Fujitsu’s motion
to dismiss this claim is DENIED, ECF No. 26.
II.

MARKMAN PROCEDURES
Zond

has

filed

a

number

of

separate

district involving these same patents.

lawsuits

in

this

Zond, Inc. v. Gillette

Co., No. 13-11567-DCJ; Zond, Inc. v. Intel Corp., No. 13-11570RGS; Zond, Inc. v. Advanced Micro Devices, Inc., No. 13-11577DPW; Zond, Inc. v. Toshiba America Elec. Components, Inc., No.
13-11581-DJC; Zond, Inc. v. SK Hynix, Inc., No. 13-11591-RGS;
Zond, Inc. v. Renesas Elecs. Corp., No. 13-11625-NMG.

In one of

these cases, Judge Stearns has scheduled a Markman hearing to
construe the claims at issue in this case.

Zond, Inc. v. Intel

Corp., No. 13-11570-RGS, Elec. Notice Hearing, ECF No. 30.

4

With

Where there are substantial non-infringing uses of an
infringing product, intent to induce infringement cannot be
inferred, even where the defendant has actual knowledge that
some users may be infringing the patent.
Vita-Mix Corp., 581
F.3d at 1329 (citing Warner-Lambert Co. v. Apotex Corp., 316
F.3d 1348, 1365 (Fed. Cir. 2003)).
18

the consent of the parties and the agreement of Judge Stearns,
his Markman claim construction will apply with full force and
effect in this case.

In return, Judge Stearns will permit the

defendants in this case fully to participate in his Markman
claim construction proceedings.

This is an efficient procedure.

I followed it while sitting as a visiting judge in the Western
District

of

Tennessee

where

Judge

McCalla

handled

the

claim

construction for the following four cases, Multilayer Stretch
Cling Film Holdings, Inc. v. Inteplast Group Ltd., No. 12-2107WGY;

Multilayer

Plastics

Corp.,

Stretch

Cling

12-2108-WGY;

Film

Holdings,

Multilayer

Inc.

Stretch

v.

Cling

Berry
Film

Holdings, Inc. v. Intertape Polymer Grp., Inc., 12-2109-JPM and
Multilayer Stretch Cling Film Holdings, Inc. v. MSC Mktg and
Tech., Inc., 12-2112-JPM, though I am handling all other pretrial aspects of two of them.

SO ORDERED.

/s/ William G. Young

WILLIAM G. YOUNG
DISTRICT JUDGE

19