Berall v. Verathon Inc. et al

Filing 326

MEMORANDUM & ORDER granting in part and denying in part 244 Motion for Judgment on the Pleadings. For the reasons and to the extent described above, Defendants' motion for judgment on the pleadings [dkt. no. 244] is GRANTED IN PART and DENI ED IN PART. The following claims are hereby dismissed: (1) the direct infringement claim against Hoya and (2) the contributory infringement claims against Hoya, Hoya Digital, and Pentax. Consistent with Federal Rule of Civil Procedure 15(a)(2), Dr. Berall may file an amended complaint no later than September 24, 2021. The Clerk of the Court shall close the open motion. SO ORDERED. (Signed by Judge Loretta A. Preska on 9/2/2021) (va)

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 1 of 26

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
JONATHAN BERALL, M.D., M.P.H.,
Plaintiff,
No. 10-CV-5777 (LAP)

-against-

MEMORANDUM & ORDER

PENTAX OF AMERICA, INC., et
al.,
Defendants.

LORETTA A. PRESKA, Senior United States District Judge:
Before the Court is the motion for judgment on the
pleadings filed by Defendants Hoya Corp. (“Hoya”), Hoya Digital
Solutions Corp. (“Hoya Digital”), and Pentax of America, Inc.
(“Pentax,” and together with Hoya and Hoya Digital,
“Defendants”).1

Plaintiff Jonathan Berall, M.D., M.P.H.,

opposed the motion.2

For the reasons below, the motion is

GRANTED IN PART and DENIED IN PART.

(See Defendants Hoya Corp., Hoya Digital Solutions Corp.,
and Pentax of America, Inc.’s Notice of Motion for Judgment on
the Pleadings, dated Jan. 28, 2021 [dkt. no. 244]; see also
Defendants Hoya Corp., Hoya Digital Solutions Corp., and Pentax
of America, Inc.’s Memorandum of Law in Support of Motion for
Judgment on the Pleadings (“Defs. Br.”), dated Jan. 28, 2021
[dkt. no. 245]; Defendants Hoya Corp., Hoya Digital Solutions
Corp., and Pentax of America, Inc.’s Reply Brief in Support of
Motion for Judgment on the Pleadings, dated Feb. 18, 2021 [dkt.
no. 261].) Defendant Teleflex Medical, Inc., does not join the
motion.
1

(See Plaintiff Dr. Berall’s Response to Hoya’s Motion for
Judgment on the Pleadings (“Pl. Opp.”), dated Feb. 11, 2021
[dkt. no. 253].)
2

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I.

Facts
Dr. Berall, an emergency-room physician, owns all right,

title, and interest in United States Patent No. 5,827,178 (“the
’178 Patent”).

(See Amended Complaint (“FAC”), dated Nov. 10,

2020 [dkt. no. 193], ¶¶ 27, 45.)

The ’178 Patent is entitled

“Laryngoscope for Use in Trachea Intubation” and was issued by
the United States Patent and Trademark Office (“PTO”) on October
27, 1998.

(See Ex. 1 to FAC (“’178 Patent”), dated Oct. 27,

1998 [dkt. no. 193-1].)
The ’178 Patent covers a laryngoscope, a medical device
used for intubating an oxygen-providing tube into the trachea of
a patient who is not breathing.

(See FAC ¶ 40.)

Dr. Berall’s

laryngoscope mounts a camera onto the blade in the vicinity of
the distal end of the device, i.e., the end furthest from the
operator.

(See id. ¶ 49.)

By virtue of the camera’s location,

the physician operating the laryngoscope has “a stable and
unobstructed view of the patient’s trachea.”

(Id.)

In October 2000, about two years after he received the ’178
Patent, “Dr. Berall attended the World Congress for
Anesthesiologists in Montreal . . . for the purpose of
publicizing his invention.”

(Id. ¶ 81.)

While at the

conference, Dr. Berall spoke with two Pentax employees about the
’178 Patent and the technical details of his invention.

2

(See

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 3 of 26

id.)

Pentax was exhibiting its own “airway management” products

at the conference.

(Id.)

Hoya3 manufactures “[t]he Airway Scope (‘AWS’) suite of
video laryngoscope products,” including “at least the AWS-S100
and AWS-S200” models.

(Id. ¶ 56.)

Paragraphs 57 through 61 of

the First Amended Complaint (“FAC”) describe the relevant
portions of the AWS laryngoscopes as follows:
57. AWS is a video laryngoscope that includes a
handle connected to a plastic blade, which covers
optics, including a video camera and a light. The
camera of the AWS is connected to a video
display. . . .
58. The blade of the AWS has a proximal end that
is connected to the handle, and a distal end that
projects laterally from the handle.
59. The AWS’s charge-coupled device (“CCD”)
camera is located in the vicinity of the distal end of
the blade (more particularly, near the tip of the
laryngoscope), and observes a visual field in front of
the camera.
60. The AWS’s CCD camera is inserted into the
blade such that it is encompassed by the blade and
becomes a single unit, with the camera eye placed in
the vicinity of the distal end of the blade.
61. The AWS display includes a lightweight builtin display mounted on the handle, which is connected
to the AWS camera located near the tip of the blade,
and displays the visual field that is observed by the
camera.

“In August 2007, Pentax became a subsidiary of Hoya Corp.”
(FAC ¶ 66.) Pentax “is a Delaware company” and “a wholly owned
subsidiary of Hoya.” (Id. ¶ 6.)
3

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Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 4 of 26

(Id. ¶¶ 57-61 (citations omitted).)

Dr. Berall alleges that

“[t]he AWS video laryngoscope embodies at least claims 1–7, and
11–15 of the ’178 Patent.”

(Id. ¶ 72.)

Beginning in late 2007, Pentax sold the AWS laryngoscopes-first the AWS-S100 model, then the AWS-S200 model--in the United
States.

(See id. ¶ 64.)

In 2012, Hoya transferred the sale of

its AWS laryngoscopes to Hoya Service Corp., which Hoya
eventually renamed Hoya Digital.4

After the transfer, Hoya

Digital continued selling the AWS model laryngoscopes in the
United States.

(See id. ¶ 69.)

On July 30, 2010, Dr. Berall filed the instant lawsuit
against Pentax (but not Hoya or Hoya Digital).
dated July 29, 2010 [dkt. no. 1].)

(See Complaint,

In response, Hoya (not

Pentax) filed two ex parte petitions seeking reexamination of
the ’178 Patent.

(See FAC ¶¶ 33, 78.)

On May 11, 2011, this

case was stayed pending the PTO’s resolution of the
reexamination proceedings.

(See Order, dated May 11, 2011 [dkt.

no. 78] at 3.)
Eight years later, the PTO’s Patent Trials and Appeals
Board confirmed the patentability of claims 1–15 of the ’178
Patent.

See Ex Parte Berall, No. 2018-008999, 2019 WL 140713,

at *7 (P.T.A.B. Jan. 4, 2019).

The PTO issued a re-examination

(See FAC ¶ 68.) Hoya Digital “is a Japanese corporation”
and “a wholly owned subsidiary of Hoya.” (Id. ¶ 7.)
4

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certificate for the ’178 Patent on July 16, 2019. (See Ex. 2 to
FAC (“Re-Exam Cert.”), dated July 16, 2019 [dkt. no. 193-2].)
On October 1, 2020, the parties informed the Court that
mediation had not resolved Dr. Berall’s claims against Pentax.
(See Joint Mediation Status Report, dated Oct. 1, 2020 [dkt. no.
176] at 1.)
Pentax.

On October 7, 2020, the Court lifted the stay as to

(See Order, dated Oct. 7, 2020 [dkt. no. 177] at 1.)

On November 12, 2020, Dr. Berall filed the FAC, asserting, inter
alia, claims of direct, contributory, induced, and willful
infringement against Pentax, Hoya, and Hoya Digital.
¶¶

56-89.)
II.

(See FAC

The instant motion followed.

Legal Standards

“In this patent case the [C]ourt applies the law of the
Federal Circuit to patent issues, and the law of its regional
circuit, the Second Circuit, to non-patent issues.”

Am. Tech.

Ceramics Corp. v. Presidio Components, Inc., 414 F. Supp. 3d
304, 307 (E.D.N.Y. 2019).
a. Rule 12(c)
“In deciding a Rule 12(c) motion” for judgment on the
pleadings, the Court “employ[s] the same standard applicable to
dismissals pursuant to Rule 12(b)(6).”

L-7 Designs, Inc. v. Old

Navy, LLC, 647 F.3d 419, 429 (2d Cir. 2011) (ellipsis and
alterations omitted).

“To survive a Rule 12(c) motion, [the]

complaint must contain sufficient factual matter, accepted as
5

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 6 of 26

true, to state a claim to relief that is plausible on its face.”
Hayden v. Paterson, 594 F.3d 150, 160 (2d Cir. 2010).

“Specific

facts are not necessary; the statement need only give the
defendant fair notice of what the claim is and the grounds upon
which it rests.”

Erickson v. Pardus, 551 U.S. 89, 93 (2007)

(per curiam) (cleaned up).

“On a 12(c) motion, the court

considers the complaint, the answer, any written documents
attached to them, and any matter of which the court can take
judicial notice for the factual background of the case.”
Designs, 647 F.3d at 422 (quotation marks omitted).

L-7

The Court

“accept[s] all factual allegations in the complaint as true and
draw[s] all reasonable inferences in [Dr. Berall’s] favor.”
Hayden, 594 F.3d at 160.
b. Substantive Patent Law
Under federal law, “whoever 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.”

35 U.S.C. § 271(a).

“Direct infringement under

§ 271(a) occurs where all steps of a claimed method are
performed by or attributable to a single entity,” Akamai Techs.,
Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir.
2015) (en banc) (per curiam), and “the reach of section 271(a)
is limited to infringing activities that occur within the United
6

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 7 of 26

States,” MEMC Elec. Materials, Inc. v. Mitsubishi Materials
Silicon Corp., 420 F.3d 1369, 1375 (Fed. Cir. 2005).

An entity

may be held responsible for directed infringement by another,
however, “in two sets of circumstances: (1) where that entity
directs or controls others’ performance, and (2) where the
actors form a joint enterprise.”

Akamai, 797 F.3d at 1022.

The

Federal Circuit has “held that an actor is liable for
infringement under § 271(a) if it acts through an agent
(applying traditional agency principles) or contracts with
another to perform one or more steps of a claimed method.”

Id.

at 1023.
Section 271(b) provides a secondary theory of liability.5
Under that provision, “[w]hoever actively induces infringement
of a patent shall be liable as an infringer.”
§ 271(b).

35 U.S.C.

“[I]nduced infringement under § 271(b) requires

knowledge that the induced acts constitute patent infringement.”
Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766
(2011).

“[M]ere knowledge of possible infringement by others

does not amount to inducement; specific intent and action to
induce infringement must be proven.”

DSU Med. Corp. v. JMS Co.,

471 F.3d 1293, 1305 (Fed. Cir. 2006).

But a plaintiff need not

“Indirect infringement, whether inducement to infringe or
contributory infringement, can only arise in the presence of
direct infringement . . . .” Dynacore Holdings Corp. v. U.S.
Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004).
5

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“prove its case at the pleading stage.”

In re Bill of Lading

Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1339
(Fed. Cir. 2012).

“For an allegation of induced infringement to

survive a motion to dismiss, a complaint must plead facts
plausibly showing that the accused infringer specifically
intended another party to infringe the patent and knew that the
other party’s acts constituted infringement.”

Nalco Co. v.

Chem-Mod, LLC, 883 F.3d 1337, 1355 (Fed. Cir. 2018) (cleaned
up).
Section 271(c) offers another theory of indirect liability:
Whoever offers to sell or sells within the United
States or imports into the United States a component
of a patented machine, manufacture, combination or
composition, or a material or apparatus for use in
practicing a patented process, constituting a material
part of the invention, knowing the same to be
especially made or especially adapted for use in an
infringement of such patent, and not a staple article
or commodity of commerce suitable for substantial
noninfringing use, shall be liable as a contributory
infringer.
35 U.S.C. § 271(c).

To state a claim for contributory

infringement, the patent owner must plead facts permitting an
inference that (1) “there is direct infringement,” (2) “the
accused infringer had knowledge of the patent,” (3) “the
component has no substantial noninfringing uses,” and (4) “the
component is a material part of the invention.”

Fujitsu Ltd. v.

Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010).

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Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 9 of 26

Under the Patent Act, a district court “may,” in its
discretion, “increase the damages up to three times the amount
found or assessed.”

35 U.S.C. § 284.

“Awards of enhanced

damages . . . are not to be meted out in a typical infringement
case, but are instead designed as a ‘punitive’ or ‘vindictive’
sanction for egregious infringement behavior.”

Halo Elecs.,

Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016).

As

the Federal Circuit recently explained, an enhanced-damages
inquiry proceeds in two steps:
Under Halo, the concept of “willfulness” requires a
jury to find no more than deliberate or intentional
infringement. The question of enhanced damages is
addressed by the court once an affirmative finding of
willfulness has been made. It is at this second stage
at which the considerations of egregious behavior and
punishment are relevant.
Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d
1367, 1378 (Fed. Cir. 2020) (citations omitted).

Accordingly,

at the pleading stage “a plaintiff must plausibly allege that
the accused infringer deliberately or intentionally infringed a
patent-in-suit after obtaining knowledge of that patent and its
infringement.”6

APS Tech., Inc. v. Vertex Downhole, Inc., No. CV 19-1166
(MN), 2020 WL 4346700, at *4 (D. Del. July 29, 2020). Pre-Eko
caselaw in this District required a plaintiff to “plead facts
sufficient to support an inference that the infringement at
issue is ‘egregious’ in addition to pleading subjective intent.”
Novartis Vaccines & Diagnostics, Inc. v. Regeneron Pharms.,
Inc., No. 18-CV-2434 (DLC), 2018 WL 5282887, at *2 (S.D.N.Y.
(continued on following page)
6

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III. Discussion
Defendants raise five arguments in support of their motion:
(1) Defendants are not liable for patent infringement because
“the FAC does not allege that the accused AWS-S100 and AWS-S200
laryngoscopes meet each limitation of the asserted claims 1-7
and 11-15” of the ’178 Patent, (Defs. Br. at 4); (2) Dr. Berall
“never pleads a plausible claim of direct infringement against”
Hoya specifically, (id. at 6); (3) Dr. Berall failed to plead an
induced infringement claim against Defendants, (id. at 8); (4)
Dr. Berall failed to plead a contributory infringement claim
against Defendants, (id. at 10); and (5) Dr. Berall cannot
recover enhanced damages because he failed to plead that any
infringement of the ’178 Patent was willful, (see id. at 12-13).
a. Direct Infringement
The Court leads off by considering Dr. Berall’s direct
infringement claims against Defendants.
1. The FAC’s “Mounted On” Allegations
First, Defendants assert that Dr. Berall’s claims against
each of them fail because the FAC “does not allege that the
accused AWS-S100 and AWS-S200 laryngoscopes meet each limitation

(continued from previous page)
Oct. 24, 2018). But because Eko, 946 F.3d at 1378, makes clear
that egregiousness only becomes relevant after the jury has
found willfulness, the Court finds that alleging egregiousness
is not necessary at the pleadings stage.
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of the asserted claims 1-7 and 11-15” of the ’178 Patent.7
Specifically, Defendants aver that the FAC is deficient because
it does not plead “that the cameras of the accused AWS-S100 and
AWS-S200 laryngoscopes are ‘mounted on’ the blade” of the
device.

(Id. at 4.)

At base, Defendants posit, Dr. Berall

“cannot make the averment required to state a plausible claim of
infringement in view of the very structure of the accused
products . . . and, accordingly, his claims should be dismissed
with prejudice.”

(Id. at 6.)

At this stage, Dr. Berall’s complaint need only contain
“sufficient factual matter, accepted as true, to state a claim
to relief that is plausible on its face.”8

“To meet this

requirement, the plaintiff must plead factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
F.3d at 1347 (quotation marks omitted).

Nalco, 883

“Specific facts are not

necessary; the statement need only give the defendant fair

(Defs. Br. at 4.) Dr. Berall’s patent asserted sixteen
claims. (See ’178 Patent col. 6 l.5–col. 8 l.17.) Following ex
parte reexamination, the PTO confirmed the first fifteen claims
and cancelled the sixteenth. (See Re-Exam Cert. at col. 1 l.1011.)
7

Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) (quotation
marks omitted); see also L-7 Designs, 647 F.3d at 429
(instructing that Rule 12(c) motions are governed by “the same
standard applicable to dismissals pursuant to Rule 12(b)(6)”
(ellipsis and alterations omitted)).
8

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notice of what the claim is and the ground upon which it rests.”
Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260
(Fed. Cir. 2018) (cleaned up).
Dr. Berall has met that standard.

The FAC does the

following: (1) alleges that the AWS laryngoscopes “embod[y] at
least claims 1–7, and 11–15 of the ’178 Patent,” (FAC ¶ 72); (2)
attaches as exhibits the ’178 Patent as well as the result of
the PTO’s ex parte re-examination, (see generally ’178 Patent;
Re-Exam Cert.); (3) appends photos, complete with annotations,
of Defendants’ allegedly infringing products, (see FAC ¶ 57),
(4) explains how the AWS laryngoscopes’ camera is mounted and
describes the camera’s location, (see id. ¶¶ 59-60); and (5)
attaches as exhibits two third-party articles which also
describe the AWS laryngoscopes.9

That is more than enough to

provide fair notice of Dr. Berall’s claims and the grounds upon
which they rest, especially considering Disc Disease.10

(See Ex. 4 to FAC, dated Dec. 4, 2006 [dkt. no. 193-4] at
2 (“The AWS-S100 has an imaging CCD and LED light attached to
its tip.”); Ex. 6 to FAC, dated Dec. 31, 2007 [dkt. no. 193-6]
at 641 (“The Pentax-AWS . . . displays the view obtained by a
CCD camera mounted in the tip of the laryngoscope.”).)
9

There, “[t]he complaint specifically identified the three
accused products--by name and by attaching photos of the product
packaging as exhibits--and alleged that the accused products
meet ‘each and every element of at least one claim of the ‘113
[or ‘509] Patent, either literally or equivalently.’” Disc
Disease, 888 F.3d at 1260. Those “allegations,” the Federal
Circuit found, were “sufficient under the plausibility standard
(continued on following page)
10

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Defendants’ focus on the absence of the magic words “mounted on”
slices things far too finely.11
2. Hoya’s Direct Infringement
Defendants also assert that Dr. Berall has failed
sufficiently to plead that Hoya directly infringed the ’178
Patent.

(See Defs. Br. at 6-7.)

Defendants suggest that

“Plaintiff’s only factual averment concerning Hoya Corp.’s
alleged infringement consists of a single sentence at paragraph
67 of the FAC.”

(Id. at 7 (emphasis omitted).)

That paragraph

provides as follows:
Hoya Corp. manufactured the AWS video laryngoscopes,
either directly or through a subsidiary or contractor,
and caused those AWS video laryngoscopes to be
imported into, sold in, or offered for sale in the
United States, including through Pentax and Hoya
Digital.
(FAC ¶ 67.)

Relying on that provision, Defendants maintain that

the FAC fails to allege that the only activity Hoya undertook-i.e., manufacturing--ever occurred in the United States, a

(continued from previous page)
of Iqbal/Twombly,” id., and Dr. Berall’s allegations are far
more comprehensive.
It may well be that differences in the camera mounting
mechanism between the ’178 Patent and the AWS laryngoscopes mean
that Defendants’ product does not infringe the ’178 Patent. But
that is an issue of claim construction, which does not lend
itself to resolution on a pleadings-based motion where courts
“afford the claims their broadest possible construction.” Bill
of Lading, 681 F.3d at 1343 n.13.
11

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prerequisite for a direct infringement claim against Hoya.

(See

Defs. Br. at 7.)
Dr. Berall counters that the FAC alleges actions that Hoya
itself undertook that infringe the ’178 Patent.
at 10.)

(See Pl. Opp.

Specifically, Dr. Berall relies on Paragraphs 13, 29,

and 73 of the FAC.

(See id.)

Those paragraphs cannot bear the

weight that Dr. Berall places on them.

Each speaks about

Defendants collectively, merely stating in conclusory fashion
that they sold, marketed, produced, etc., the AWS
laryngoscopes.12

They do not, however, differentiate which

activities were undertaken by which entity.

And unlike for Hoya

Digital and Pentax, the FAC offers precious few other
allegations regarding Hoya’s activities.

Indeed, Paragraph 67

provides the only Hoya-specific allegation: That Hoya
“manufactured the AWS video laryngoscopes.”

(FAC ¶ 67.)

Absent

(See FAC ¶ 13 (“This Court has personal jurisdiction over
Pentax, Hoya Corp., and Hoya Digital at least because those
defendants sold, offered for sale, or imported infringing AWS
video laryngoscopes into this District, or caused the same to
occur through their affiliates or contractors.” (emphasis
added)); id. ¶ 29 (“Pentax, Hoya, and Hoya Digital market,
produce, distribute, sell, and/or offer to sell in the United
States and/or import into the United States video laryngoscopes,
including, for example, the AWS video laryngoscope.” (emphasis
added)); id. ¶ 73 (“Pentax, Hoya, and Hoya Digital made, used,
offered to sell, imported and/or sold within the United States
(including in this District), and/or actively induced others to
make, use, offer to sell, and/or sell within the United States
(including in this District), during the life of the ’178
Patent, products that practice the inventions of the ’178
Patent, including, for example, the AWS video laryngoscope.”).)
12

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from the FAC, however, is any allegation that such manufacturing
occurred in the United States, notwithstanding Dr. Berall’s
acknowledgement that Hoya is a Japanese company with its
principal place of business in Tokyo.

(See id. ¶ 5.)

Lacking

such a domestic connection, Hoya’s manufacturing of the AWS
laryngoscopes cannot form the basis of a direct infringement
claim.13
Attempting to salvage the direct infringement claim against
Hoya, Dr. Berall focuses on the latter half of Paragraph 67,
(see Pl. Opp. at 10-11), which alleges that Hoya “caused” the
AWS “laryngoscopes to be imported into, sold in, or offered for
sale in the United States” (principally by Pentax and Hoya
Digital), (FAC ¶ 67).

Dr. Berall suggests that “by acting

‘through Pentax and Hoya Digital’ to perform directly infringing
acts in the United States”--namely the importation and sale of
the AWS laryngoscopes--Hoya “is also directly liable for its
agents’ infringement.”

(Pl. Opp. at 11 (emphasis omitted).)

The Federal Circuit does extend direct infringement liability to
instances where, “consider[ing] general principles of vicarious

See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 455
(2007) (“The traditional understanding that our patent law
operates only domestically and does not extend to foreign
activities is embedded in the Patent Act itself . . . .”
(cleaned up)); MEMC, 420 F.3d at 1375 (“It is well-established
that the reach of section 271(a) is limited to infringing
activities that occur within the United States.”).
13

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liability” such as agency, an “entity directs or controls
others’ performance.”

Akamai, 797 F.3d at 1022.

But Dr. Berall

does not allege that any of the traditional elements of agency
are present between Hoya and Pentax or Hoya and Hoya Digital.14
Dr. Berall’s allegations that Pentax and Hoya Digital are wholly
owned subsidiaries, (see FAC ¶¶ 6-7), are insufficient standing
alone to establish an agency relationship.15

Absent such a

relationship, Pentax and Hoya Digital’s alleged infringement
cannot sustain a direct infringement claim against Hoya.16
Alternatively, Dr. Berall suggests that Hoya can be liable
for direct infringement because “Hoya Corp., Hoya Digital, and
Pentax formed a joint enterprise regarding the sale of the

“The essential elements of agency are (1) the principal’s
right to direct or control the agent’s actions, (2) the
manifestation of consent by the principal to the agent that the
agent shall act on his behalf, and (3) the consent by the agent
to act.” In re Google LLC, 949 F.3d 1338, 1345 (Fed. Cir. 2020)
(cleaned up).
14

See RESTATEMENT (SECOND) OF AGENCY § 14M (1958) (“A
corporation does not become an agent of another corporation
merely because a majority of its voting shares is held by the
other.”); see also Bigio v. Coca-Cola Co., 675 F.3d 163, 175 (2d
Cir. 2012) (“A corporate parent’s ownership interest in a
subsidiary, standing alone, is insufficient to demonstrate the
existence of an agency relationship.”).
15

See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game
Tech., 709 F.3d 1348, 1363 (Fed. Cir. 2013) (“One party’s
direction or control over another in a principal-agent
relationship or like contractual relationship operates as an
exception to this general rule, but absent that agency
relationship or joint enterprise, we have declined to find one
party vicariously liable for another’s actions.”).
16

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infringing AWS” laryngoscopes.
fares no better.

(Pl. Opp. at 11.)

That argument

Dr. Berall has failed to plead any facts to

support that the elements of a joint enterprise are present.17
Indeed, the Court observes that a joint-enterprise theory is
inconsistent with both (1) Hoya Digital and Pentax being wholly
owned subsidiaries of Hoya, (see FAC ¶¶ 6-7), and (2) Dr.
Berall’s suggestion that Hoya Digital and Pentax were Hoya’s
agents.18
In short, the FAC does not allege sufficient facts to state
a claim for direct infringement against Hoya.

Dr. Berall’s

direct infringement claim against Hoya will be dismissed.
b. Indirect Infringement
The Court turns next to Dr. Berall’s indirect infringement
claims against Defendants.
1. Induced Infringement
Defendants assert that Dr. Berall “fails to plead
sufficient facts that plausibly show” that Defendants “induced
infringement of the” ’178 Patent.

(Defs. Br. at 8.)

Dr. Berall

“A joint enterprise requires proof of four elements: (1)
an agreement, express or implied, among the members of the
group; (2) a common purpose to be carried out by the group; (3)
a community of pecuniary interest in that purpose, among the
members; and (4) an equal right to a voice in the direction of
the enterprise, which gives an equal right of control.” Akamai,
797 F.3d at 1023.
17

See Hollingsworth v. Perry, 570 U.S. 693, 713 (2013) (“An
essential element of agency is the principal’s right to control
the agent’s actions.”).
18

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Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 18 of 26

disagrees, citing three theories of induced infringement he
claims the FAC pleads: “(1) the infringing use of the AWS by
medical practitioners; (2) the infringing re-sale and offer for
sale of the AWS by Hoya’s distributors; and (3) in the case of
Hoya Corp., inducing the sale, offer for sale, and importation
of the AWS by its subsidiaries Pentax and Hoya Digital.”
Opp. at 11.)

(Pl.

Because liability for induced infringement

“requires knowledge that the induced acts constitute patent
infringement,” the FAC “must contain facts plausibly showing
that” Defendants “specifically intended” downstream actors “to
infringe” the ’178 Patent and knew those downstream “acts
constituted infringement.”

Bill of Lading, 681 F.3d at 1339.

The FAC fits that bill.
First, the FAC is flush with allegations of Defendants’
knowledge of the alleged infringement.

The FAC provides the

following: (1) “Pentax had knowledge of the ’178 Patent, and
notice of its infringement thereof by the AWS, at least as of
the service of the Original Complaint” in 2010; (2) “Hoya had
knowledge of the ’178 Patent shortly thereafter” based on its
filing of two ex parte reexamination requests with the PTO; and
(3) Hoya Digital became aware of the alleged infringement in
2012, after Hoya transferred its “airway management business
(including sale of the accused AWS laryngoscope) from Pentax to
Hoya Digital.”

(FAC ¶¶ 33, 77-79.)
18

Dr. Berall also alleges

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 19 of 26

that Pentax first obtained knowledge of the ’178 Patent in 2000,
when Dr. Berall spoke with two Pentax employees at a conference
and “explained the technical details of his invention to both
and informed them of the ’178 Patent.” (Id. ¶ 81.)
And second, the FAC pleads sufficient facts suggesting that
Hoya, Hoya Digital, and Pentax induced downstream actors to
infringe the ’178 Patent.

For example, the FAC alleges that

Defendants “provide advertisements, videos, user manuals, or
other materials to their customers encouraging the use of the
AWS laryngoscope for intubations,”19 which the Federal Circuit
has suggested evidences “the required mental state for inducing
infringement.”

Microsoft Corp. v. DataTern, Inc., 755 F.3d 899,

905 (Fed. Cir. 2014).

Moreover, the FAC alleges that “Hoya

Digital’s website identified U.S. distributors, whose websites
were offering the AWS video laryngoscope for sale at least as of
2016.”20

Finally, the FAC alleges that “Hoya actively induces

(FAC ¶ 75; see also Ex. 11 to FAC, dated Oct. 19, 2020
[dkt. no. 193-11] (Pentax website explaining the features and
benefits of the AWS laryngoscopes).) The FAC also suggests that
Hoya Digital induced infringement by “exhibit[ing] the AWS video
laryngoscope at trade shows in the United States in at least
2014 and 2015.” (FAC ¶ 70; see also Ex. 13 to FAC, dated Oct.
19, 2020 [dkt. no. 193-13] (Pentax website advertising display
at trade show in Seattle); Ex. 14 to FAC, dated Oct. 19, 2020
[dkt. no. 193-14] (Pentax website advertising display at trade
show in New Orleans).)
19

(FAC ¶ 71 (citation omitted); see also Ex. 15 to FAC,
dated July 12, 2020 [dkt. no. 193-15] at 1 (Hoya website
(continued on following page)
20

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Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 20 of 26

the infringing sale, offer for sale, and importation of the AWS
by its subsidiaries, Pentax and Hoya Digital, by providing or
selling them the infringing AWS, and directing them to sell,
offer for sale, or import the AWS.”

(FAC ¶ 75.)

In short, the Court finds the aforementioned allegations,
taken together, sufficient to sustain Dr. Berall’s induced
infringement claims at the pleadings stage.
2. Contributory Infringement
Next, Defendants aver that Dr. Berall “fails to plead
sufficient facts that plausibly show” that Defendants
“contributed to the infringement of the” ’178 Patent.
Br. at 10.)

(Defs.

Defendants make two principal points: (1) Dr.

Berall fails to plead facts evincing that Defendants “possessed
the requisite knowledge element for contributory infringement”;
and (2) Dr. Berall “nowhere pleads that . . . Defendants provide
anything less than the claimed laryngoscope itself,” i.e., he
does not plead that Defendants sold components of the AWS
laryngoscopes or that the AWS laryngoscope is itself a component

(continued from previous page)
identifying Bay State Anesthesia, Cosmo Health, Rapid Trauma,
and Richard’s Medical Equipment as U.S.-based distributors); Ex.
16 to FAC, dated July 12, 2020 [193-16] at 1 (Bay State
Anesthesia website advertising AWS laryngoscope for sale); Ex.
17 to FAC, dated July 12, 2020 [193-17] at 1-2 (Richard’s
Medical Equipment website advertising AWS laryngoscope for
sale); Ex. 18 to FAC, dated July 12, 2020 [193-18] at 1-5 (Cosmo
Health website advertising AWS laryngoscope for sale and
demonstrating its use).)
20

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 21 of 26

of some other product.

(Id. at 11.)

Recall that to state a

claim for contributory infringement, Dr. Berall must plead that
(1) “there is direct infringement,” (2) “the accused infringer
had knowledge of the patent,” (3) “the component has no
substantial noninfringing uses,” and (4) “the component is a
material part of the invention.”

Fujitsu, 620 F.3d at 1326.

Defendants’ arguments focus on the second and fourth elements.
The Court will address each in turn.
The Court disagrees with Defendants’ argument regarding
knowledge.

The FAC contains numerous, detailed allegations that

the Defendants knew of the ’178 Patent as early as 2000 (i.e.,
before they even began developing the AWS laryngoscopes) and of
their alleged infringement of the ’178 Patent as early as 2010.
(See FAC ¶¶ 77-83.)

In other words, Defendants “knew that the

combination for which its components were especially made was
both patented and infringing.” Golden Blount, Inc. v. Robert H.
Peterson Co., 365 F.3d 1054, 1061 (Fed. Cir. 2004).

That is

more than enough at the pleadings stage.
As for Defendants’ “component” contention, the Court
agrees.

As the Federal Circuit has explained, “[t]he language

of [§ 271(c)] incorporates the core notion that one who sells a
component especially designed for use in a patented invention
may be liable as a contributory infringer, provided that the
component is not a staple article of commerce suitable for
21

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 22 of 26

substantial noninfringing use.”

Ricoh Co. v. Quanta Comput.

Inc., 550 F.3d 1325, 1337 (Fed. Cir. 2008).

In other words, the

purpose of a contributory infringement claim is to address “the
situation where a seller would sell a component which was not
itself technically covered by the claims of a product or process
patent but which had no other use except with the claimed
product or process.”

Hewlett-Packard Co. v. Bausch & Lomb Inc.,

909 F.2d 1464, 1469 (Fed. Cir. 1990).
not present in this case.

That situation is simply

Here, Dr. Berall premises his

contributory infringement claim on Defendants’ sale of the AWS
laryngoscopes, a discrete product that he asserts directly
infringes the ’178 Patent.

(See FAC ¶ 74.)

Crucially, however,

the FAC does not allege that the AWS laryngoscopes are a
component part of some other patented invention, and, almost
definitionally, an entire product cannot itself be a component
of that same product.

Dr. Berall’s reliance on Conair Corp. v.

Jarden Corp., No. 13-CV-6702 (AJN), 2014 WL 3955172 (S.D.N.Y.
Aug. 12, 2014), is therefore misplaced.21

There, the defendant was accused of selling a patented
milk container attachment for a coffee maker as a part of its
brand of espresso, cappuccino, and latte machines. See Conair,
2014 WL 4468088 at *1. In other words, the patented milk
container attachment was offered for sale as an individual
component of a larger coffee machine. That is materially
different from what the Court confronts here.
21

22

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 23 of 26

Dr. Berall tries to save his contributory infringement
claim by asserting that the FAC alleges Defendants sold
individual components of the AWS laryngoscopes, including, most
notably, disposable PBlades.
contains no such allegations.

(See Pl. Opp. at 16.)

But the FAC

A few paragraphs of the FAC do

cite to appended exhibits describing the PBlade as a distinct
component of the AWS laryngoscopes.22

But Dr. Berall nowhere

alleges that Defendants sold PBlades, as individual components,
in the United States.

That failure seals the fate of his

contributory infringement claim.
In short, the FAC alleges only that Defendants sold the
entire product protected by the ’178 Patent, not a component
thereof.

Nor does the FAC allege that the AWS laryngoscopes

themselves are a component part of some other patented
invention.

Accordingly, Dr. Berall’s contributory infringement

claims will be dismissed.

(See Ex. 8 to FAC, dated Oct. 12, 2008 [dkt. no. 193-8]
at 129 (showing “the Pentax AWS® laryngoscope with single-use
blade clipped onto the camera system” (cited at FAC ¶ 60)); Ex.
9 to FAC, dated Apr. 2009 [dkt. no. 193-9] at 898 (“THE PentaxAWS . . . consists of a disposable blade (PBlade®; Hoya
Corporation), a 12-cm image tube with a charge-coupled device
camera, and a handle with a 6-cm liquid crystal display (fig.
1).” (cited at FAC ¶ 60)); Ex. 13 at 1 (“The PENTAX video
laryngoscope AWS-S200 and PBLADE will be on display at the 2014
SAM Meeting, to be held in Seattle, the United States.” (cited
at FAC ¶ 70)); Ex. 14 at 1 (“The PENTAX video laryngoscope AWSS200 and PBLADE will be on display at the ANESTHESIOLOGY™ 2014,
to be held in New Orleans, the United States.” (cited at FAC ¶
70)).)
22

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Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 24 of 26

c. Willful Infringement
Finally, Defendants assert that Dr. Berall has failed
adequately to plead willful infringement.
13.)

(See Defs. Br. at 12-

Specifically, Defendants suggest that the FAC’s

“allegation of willful infringement consists only of a single,
conclusory sentence: ‘Pentax’s, Hoya’s, and Hoya Digital’s
infringement has occurred with knowledge of the ’178 Patent and
has been willful.’”
omitted).)

(Id. at 13 (quoting FAC ¶ 77) (emphasis

In Defendants’ view, “[t]hat is entirely

insufficient under the law and dismissal of Plaintiff’s claim of
willful infringement is thus appropriate.”

(Id.)

The Court disagrees with Defendants’ characterization of
the FAC.

Following “Halo, the concept of ‘willfulness’ requires

a jury to find no more than deliberate or intentional
infringement.”

Eko, 946 F.3d at 1378.

Thus, at the pleading

stage, Dr. Berall need only “plausibly allege that the accused
infringer deliberately or intentionally infringed a patent-insuit after obtaining knowledge of that patent and its
infringement.”
so.

APS Tech., 2020 WL 4346700, at *4.

He has done

The FAC alleges the following: (1) Defendants knew about

the ’178 Patent as early as 2000, several years before
Defendants developed and began selling the AWS laryngoscopes,
(see FAC ¶¶ 81-84); (2) Defendants were aware of their alleged
infringement as early as 2010, (see id. ¶¶ 77-80); and (3)
24

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 25 of 26

despite possessing such knowledge, Defendants manufactured their
AWS suite of laryngoscopes anyway, (see id. ¶¶ 64-73).
enough at the pleadings stage.

That is

Defendants reliance on a series

of pre-Eko cases is misplaced.23
The Court is, of course, mindful of Justice Breyer’s
observation that courts may not “award enhanced damages simply
because the evidence shows that the infringer knew about the
patent and nothing more.” Halo, 136 S. Ct. at 1936 (Breyer, J.,
concurring).

But, as Eko clarified, 946 F.3d at 1378, whether

enhanced damages are warranted is a question distinct from
whether a willful infringement claim can go to the jury in the
first place.

Although it may well be that Dr. Berall cannot

recover such damages--even if he ultimately succeeds on his
infringement claims--the Court need not resolve that issue now.
Dr. Berall need not prove his case at the pleadings stage.

Defendants cite only one case issued after Eko: Signify
North America Corp. v. Axis Lighting Inc., No. 19-CV-5516 (DLC),
2020 WL 1048927 (S.D.N.Y. Mar. 4, 2020). There, the court
granted a motion to dismiss where the plaintiff alleged only
that the defendant knew of the patent-at-issue through “pre-suit
notice letters.” Id. at *3. Unlike here, however, the
plaintiff in that case did “not allege that [the defendant] had
knowledge of [the plaintiff]’s patents at the time it began
selling the accused products.” Id. Moreover, the Signify court
later reinstated the willful infringement claims following a
successful motion for reconsideration. See Signify N. Am. Corp.
v. Axis Lighting Inc., No. 19-CV-5516 (DLC), 2020 WL 2079844, at
*1 (S.D.N.Y. Apr. 30, 2020). Signify therefore provides
Defendants with no help.
23

25

Case 1:10-cv-05777-LAP Document 326 Filed 09/02/21 Page 26 of 26

IV.

Conclusion

For the reasons and to the extent described above,
Defendants’ motion for judgment on the pleadings [dkt. no. 244]
is GRANTED IN PART and DENIED IN PART.

The following claims are

hereby dismissed: (1) the direct infringement claim against Hoya
and (2) the contributory infringement claims against Hoya, Hoya
Digital, and Pentax.

Consistent with Federal Rule of Civil

Procedure 15(a)(2), Dr. Berall may file an amended complaint no
later than September 24, 2021.

The Clerk of the Court shall

close the open motion.
SO ORDERED.
Dated:

September 2, 2021
New York, New York
__________________________________
LORETTA A. PRESKA
Senior United States District Judge

26