District Court in Delaware Dismisses Patent Infringement Claim That is Plead Based on Joint Infringement But Did Not Plead Sufficient Facts to Establish Direction and/or Control

November 25, 2013

Bonutti Skeletal Innovations LLC ("Benutti") filed a patent infringement action against Conformis, Inc. ("Conformis"). Conformis moved to dismiss on several grounds, including that the complaint asserted an infringement theory based on "joint infringement" and therefore did not state a claim for relief.

In analyzing the claim at issue, the district court first noted that "in order to adequately state a claim for direct infringement of method claims, the complaint must allege that the accused infringer "perform[ed] all the steps of the claimed method, either personally or through another acting under his direction or control." Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012). Where the complaint alleges that the accused infringer personally performed all the steps of the claimed method, Form 18 of the Federal Rules of Civil Procedure provides the pleading standard by which the plaintiff's allegations are to be measured. See Superior Indus., LLC v. Thor Global Enter. Ltd., 700 F.3d 1287, 1295 (Fed. Cir. 2012); Pragmatus AV, LLC v. Yahoo! Inc., Civ. Action No. 11-902-LPS-CJB, 2012 U.S. Dist. LEXIS 161874, at *9-12 (D. Del. Nov. 13, 2012), adopted by 2013 U.S. Dist. LEXIS 73636 (D. Del. May 24, 2013). Where the complaint implicates a theory of joint infringement, and thus alleges what is known as divided infringement, however, a plaintiff must allege much more than merely the requirements of Form 18. See Pragmatus, 2013 U.S. Dist. LEXIS at *11. Specifically, the complaint must also plead facts sufficient to allow the court to reasonably infer that one party exercises "direction or control" such that performance of every step is attributable to the controlling party. Id. at *15.

Turning to the facts as alleged by Bonutti, the district found that "Bonutti clearly asserts a joint infringement theory. (D.1. 1 at 111111 17-19, 21; D.I. 13 at 12¬13.) Indeed, Bonutti must assert joint infringement because, as the '896 patent states, the '896 patent is for "[a]n improved method of performing surgery on a joint in a patient's body, such as a knee...." (D.I. 1-1 at 2.) There is no indication that ConforMIS performs surgery on patients. (D.I. 1 at VI 8-10) (Stating only that ConforMIS "creates, distributes, and otherwise makes available" its products to "surgeons and the public at large" and offers training labs for surgeons at which procedures are demonstrated on cadavers, not patients.)

The district court then found that "[t]here are no allegations in the complaint that can form the basis of a reasonable inference that ConforMIS so directed or controlled the surgeons' performance of the '896 patent's steps that an agency relationship can be deemed to have existed. Thus, Bonutti's direct infringement claim must be dismissed. See, e.g., Desenberg v. Google, Inc., 392 Fed. App'x 868 (Fed. Cir. 2010) (Upholding district court's grant of motion to dismiss because the defendant could not be a direct infringer where the method required a user's participation in manner not directed or controlled by the defendant.)"

Turning to indirect infringement, the district court also found that were insufficient allegations. "[I]n order to establish a claim for induced infringement, the plaintiffs complaint must plausibly allege that the patent was directly infringed. See In Re Bill of Lading, 681 F.3d at 1333 ("It is axiomatic that 'there can be no inducement or contributory infringement without an underlying act of direct infringement."). Having sufficiently alleged direct infringement, the plaintiff must then sufficiently allege that "the alleged inducer knew of the patent, knowingly induced the infringing acts, and possessed a specific intent to encourage another's infringement of the patent." Vita-mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009).

The district court then found that Bonutti had not alleged sufficient facts to demonstrate inducement. "Bonutti does not, however, allege at all in its complaint that ConforMIS knowingly induced infringement of the patents and possessed the requisite specific intent. In addition, Bonutti does not set out any facts at all that would permit the court to infer that either of those two elements is established. See, e.g., In Re Bill of Lading, 681 F.3d at 1323 (Explaining that the complaint must contain facts plausibly showing that the indirect infringer specifically intended the direct infringers to infringe the patent and knew that the direct infringer's acts constituted infringement.) Consequently, Bonutti's induced infringement claim against ConforMIS must be dismissed."

Finally, the district court addressed the allegations of contributory infringement. The district court explained that " in order to establish contributory infringement pursuant to 35 U.S.C. § 271(c), a patentee must demonstrate that an alleged contributory infringer has sold, offered to sell, or imported into the United States a component of an infringing product while "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". Accordingly, in order to state a claim for contributory infringement, the plaintiff "must, among other things, plead facts that allow an inference that the components sold or offered for sale have no substantial noninfringing uses." In Re Bill of Lading, 681 F.3d at 1337. The plaintiff must also establish knowledge and intent. See, e.g., Aro Mfg. Co. v. Convertible Red Top Replacemt. Co., 377 U.S. 476, 488 (1964)."

The district court also found that these allegations were insufficient. " In the instant case, Bonutti alleges that ConforMlS sold or offered for sale products that infringe the '896 patent. (D.I. 1 at ¶ 18.) Bonutti also alleges that ConforMlS had and continues to have knowledge of the '896 patent. (D.I. 1 at ¶ 20.) Bonutti does not, however, allege any specific intent or that the "knee implants and products...and/or associated instruments...products and surgical technique guides" have no other substantial noninfringing uses. Thus, like the induced infringement claim, Bonutti's contributory infringement claim against ConforMlS must be dismissed."

Bonutti Skeletal Innovations LLC v. Conformis, Inc., Case No. 1:12-cv-01109-GMS (D. Del. Nov. 14, 2013)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.