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PB&J Software Patent Infringement Claims Dismissed with Leave to Amend for Failure to Identify a Product

PB&J Software (PB&J) filed a patent infringement action against defendant Backup Agent. PB&J is the assignee of the 7,356,535 patent (the ‘535 patent) and asserted that Backup Agent was infringing, inducing others to infringe and/or was contributorily infringing at least one claim of the patent by offering services and licensing software implementing what Backup Agent identified as “seed loading.”

Backup Agent moved to dismiss the claim for direct infringement on the ground that PB&J failed to identify the accused product. As explained by the district court, “Defendant maintains that plaintiff failed to state a claim for direct infringement because it fails to identify the accused product. Here, plaintiff identifies infringing activities as including, but not limited to, ‘offering services and licensing software implementing what BackupAgent identifies as a ‘seed loading.’ Defendant argues that plaintiffs pleading deprives defendant of any notice of plaintiffs claims because plaintiff fails to explain in what products, services, or documentation defendant allegedly identifies this ‘seed loading.'”

Backup Agent also contended that “although plaintiff alleges that defendant has ‘identifie[d]’ something as ‘seed loading,’ defendant should not be expected to ‘identify’ any accused functionality. Plaintiff responds that the patent-in-suit generally relates to computer software for backing up computer data with a ‘seed’ function, and it identifies the infringing software as BackupAgent software that incorporates the ‘seed’ function. Plaintiff argues that its complaint provides more detail than required by Form 18. However, plaintiff does not attach or even describe the patent in its complaint, so it is unclear how the phrase ‘seed loading’ even relates to the patent. Moreover, plaintiff has not defined how it applies the phrase to the patent technology or identified which products it accuses of infringement in this case. Plaintiff’s complaint does not even explain the term ‘seed loading.’ Plaintiffs complaint is woefully deficient and does not, despite plaintiff’s argument to the contrary, meet the requirements of Form 18 because it does not even describe the patent, the infringing device, or the connection between the two. However, plaintiff may be able to cure the deficiency through amendment, so the direct infringement claim will be dismissed with leave to amend.”

The district court then proceeded to address the claims for indirect infringement, finding that those were insufficient as well. “Here, plaintiff states only that defendant is … ‘contributorily infringing … at least one claim of the patent.’ Although plaintiff pleads that defendant engages in infringing activities including ‘making, using, importing, selling and/or offering’ certain infringing products and services, plaintiff fails to plead the elements of a contributory infringement claim. Plaintiff must ‘plead facts that allow an inference that the components sold or offered for sale have no substantial non-infringing uses.’ Bill of Lading, 681 F.3d at 1337. Here, plaintiff makes no effort to do so. Plaintiff also fails to plead any facts regarding how the infringing ‘material or apparatus’ is known by the defendant to be especially made or adopted for use in infringement of the patent. For these reasons, plaintiffs contributory infringement claim is deficient and must be dismissed with leave to amend.”

The district court then found that the inducing infringement claim was invalid for the same reasons. “Liability for induced infringement under 35 U.S.C. § 271(b) ‘requires knowledge that the induced acts constitute patent infringement.’ Bill of Lading, 681 F.3d at 1339. The Federal Circuit requires that complaints for induced infringement ‘contain facts plausibly showing that [defendants] specifically intended [others] to infringe the [patent-in-suit] and knew that [others’] acts constituted infringement.’ Id. Plaintiff has not done so here, but I will grant leave to amend.”

PB&J Software, LLC v. Backup Agent B.V., Case No. 4:12CV691 CDP (E.D. Mo. Oct. 15, 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