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AT&T, Apple and Other Defendants Win Motion to Dismiss Claims of Indirect Infringement Even Though Claims Satisfied Form 18

Garnet Digital sued AT&T, Apple and several other defendants for patent infringement and included a claim for indirect infringement. Garnet Digital accused all of the defendants of infringing U.S. Patent No. 5,379,421, which is entitled “Interactive Terminal for the Access of Remote Database Information.” Garnet Digital made the same allegation against each of the defendants, as follows: “[Defendant] directly or through intermediaries, made, had made, used , imported, provided, supplied, distributed, sold, and/or offered for sale products and/or systems (including at least [Defendant’s product(s)]) that infringed one or more claims of he 421 patnet, and/or induced infringement and/or contributed to the infringement of one or more of the claims of the 421 patent by its customers.”

AT&T and Apple, as well a many of the other defendants, moved to dismiss the indirect infringement claims. Verizon and other defendants also moved to dismiss the patent infringement claims. Both motions were made pursuant to Fed.R.Civ.P. 12(b(6) and the AT&T, Apple motion asserted that the indirect infringement claims did not comply with Rule 8 of the Federal Rules of Civil Procedure. Verizon asserted that the direct infringement claims were insufficient because they did not identify the patent claims asserted, they failed to identify products or services and failed to identify how accused products provide the claimed functionality to perform the claimed method. Garnet Digital responded by claiming that its complaint satisfied Rule 8 and specifically Form 18.

The district court summarized the applicable law as follows: “The central issue is whether, in the light most favorable to the plaintiff, the complaint states a valid claim for relief. Id. at 1356 (internal quotations omitted); Doe v. MySpace, Inc., 528 F.3d 413, 418 (5th Cir. 2008). Under 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). A complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, but a plaintiff must plead sufficient factual allegations to show that he is plausibly entitled to relief. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555-56, 570 (2007) (‘[W]e do not require heightened fact pleading of specifics, but only enough facts to state a claim to relief that is plausible on it face.’); see also Aschcrof v. Iqbal, 556 U.S. 662, 679-680, 684 (2009) (discussing Twombly and applying Twombly generally to civil actions pleaded under Rule 8). ‘Determining whether a complaint states a plausible claim for relief will…be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.’ Iqbal, 556 U.S. at 679.”

With respect to Form 18 in particular, the district court then noted it applies to claims for direct infringement, but not claims for indirect infringement. “Thus, a claim for direct infringement that complies with Form 18 will be sufficient to state a claim that is plausible on its face. See Fed. R. Civ. P. 84. However, Form 18 does not apply to indirect infringement claims, therefore, pleadings for such claims must comply with the requirements articulated in Twombly and Iqbal. Bill of Lading, 681 F.3d at 1336-37 (‘[Because] Form 18 addresses only direct infringement, we must look to Supreme Court precedent for guidance regarding the pleading requirements for claims of indirect infringement.’).

The district court then found that Garnet Digital’s claims of direct infringement complied with Rule 8: “Garnet’s allegations of direct infringement do comply with Rule 8, because they do identify the accused products, services, methods, or other infringing acts for the patent-in suit. See Fed. R. Civ. P. Form 18 (accusing “electric motors” of infringement.). For each named defendant, Garnet has identified at least one specific product that allegedly infringes the ‘421 Patent.”

But, with respect to the claims for indirect infringement, the district court found that Garnet Digital’s allegations were insufficient: “However, Garnet’s allegations fail to state a claim of indirect infringement that is plausible on its face. In order to properly state a claim for indict infringement, Garnet must include some factual support that would allow this Court ‘to draw[a] reasonable inference that [Defendants] [are] liable for the misconduct alleged.’ Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556). Here, while Garnet asserts Defendants contributed to the infringement or induced the infringement of the ‘421 Patent by their customers, Garnet has not provided any other factual support for its indirect allegations.”

Garnet Digital, LLC v. Apple, Inc., et al., Case No. 6:11-cv-647 (E.D. Tex. Sept. 20, 2012)

The authors of 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