C. Rule 56 Motion Cases 1. Rule 56 Motions
2. Plaintiff-won Cases
a. DataQuill Ltd. v. High Tech Computer Corp.
In DataQuill Ltd. v. High Tech Computer Corp., the defendant (HTC) moved for summary judgment of no indirect infringement, but the district court denied the motion.244 Among other things, HTC argued that the plaintiff had not presented sufficient evidence to support the “specific intent”
requirement.245
The suit was filed on March 24, 2008.246 Two patents were alleged to be infringed.247 Prior to the suit, both patents were subject to the reexamination proceeding.248 On April 1, 2008, two non-final office actions were issued to reject all claims of those two patents.249 On May 14, 2009, the district court stayed the action.250 On October 27, 2009, one reexamination certificate was issued to one patent.251 On April 13, 2010, one reexamination certificate was issued to the other patent.252 Then, the district court lifted the stay because of the positive outcome.253
To prove the inducement, the plaintiff presented several pieces of evidence. First, before the suit was filed, the plaintiff had sent a letter to notify HTC of the patents-in-suit.254 Second, the plaintiff had filed a law suit against HTC.255 Third, both patents-in-suit survived the reexamination.256 Fourth, the plaintiff had produced an expert opinion explaining the
241 Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1361 (Fed. Cir. 2012).
242 Id.
243 Id. (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).
244 See DataQuill Ltd. v. High Tech Computer Corp., 2011 WL 6013022, at *2 (S.D. Cal.
Dec. 01, 2011).
245 See id. at *8.
246 See id. at *1.
247 See id.
248 See id.
249 See id.
250 See id.
251 See id.
252 See id.
253 See id.
254 See id. at *9.
255 See id.
256 See id.
infringement made by the accused products.257 Fifth, the plaintiff had presented HTC’s “marketing materials and user guides related to the accused products.”258 With these facts, the district court held that a reasonable jury will reach a conclusion of inducement.259
HTC provided two arguments that were, however, rejected by the district court. First, HTC argued that the plaintiff only showed “evidence related to the issue of whether HTC had knowledge of the allegedly induced acts.”260 The district court disagreed and held that HTC “had knowledge of [the plaintiff’s] contention that HTC was infringing these patents because [the plaintiff] had already filed the present lawsuit against HTC.”261 The second argument was that HTC “did not have the specific intent” either because all claims of the patents-in-suit were rejected in the non-office actions during the reexamination proceeding262 or because HTC had “asserted substantial defenses to [the plaintiff’s] claims through [the] litigation.”263 The district court, however, responded that these assertions “at best show[ed] that there is a triable issue of fact as to whether HTC is liable for induced infringement.”264 Specifically, the district court held that “no case law stand[ed] for the proposition that inducement can be foreclosed as a matter of law by rejections in a non-final office action or by the assertion of substantial defenses during litigation of the patents-in-suit.”265
b. Mformation Techs., Inc. v. Research in Motion Ltd.
In Mformation Techs., Inc. v. Research in Motion Ltd., the district court denied the defendant’s motion for summary judgment regarding inducement.266 The defendant argued that the plaintiff did not establish the knowledge requirement and the “specific intent” requirement.267 Regarding the knowledge requirement, the district court held that there was a triable issue of whether the defendant knew the patent-in-suit.268 This was because the plaintiff had shown that some employees of the defendant had knowledge of the patent-in-suit during “a series of disclosures made while [the plaintiff]
257 See id.
258 Id.
259 See id.
260 Id. at *10.
261 Id.
262 See id.
263 Id.
264 Id.
265 Id.
266 See Mformation Techs., Inc. v. Research in Motion Ltd., 830 F. Supp. 2d 815, 2011 WL 6357804, at *20 (N.D. Cal. Dec. 19, 2011).
267 See id.
268 See id.
was pursuing a potential partnership and license [sic] agreement with [the defendant]”269 and that one employee of the defendant “was present at a working group meeting”270 where the application for the patent-in-suit was disclosed.271
Regarding the “specific intent” requirement, the district court reached the same conclusion.272 In addition to the evidence regarding the defendant’s knowledge of the patent-in-suit, the record also showed that the defendant intended to induce third parties’ infringement.273 This was because the plaintiff had produced technical documents containing the instructions that teach consumers the infringing acts.274
3. Defendant-won Cases
a. Apeldyn Corp. v. AU Optronics Corp. (“Apeldyn II”) In Apeldyn Corp. v. AU Optronics Corp. (hereinafter, “Apeldyn II”), two Taiwanese defendants filed a motion for summary judgment of no inducement. 275 One defendant won the motion because of no direct infringement.276 The other defendant, AU Optronics Corp. (hereinafter,
“AUO”), also moved for summary judgment of no inducement and won on the issues other than direct infringement.277
AUO focused on the fact that it did not know the patent-in-suit until the law suit was filed.278 The plaintiff provided two theories to overcome AUO’s assertion, but the district court did not agree.279 The first theory was the
“transitive knowledge” theory.280 The plaintiff produced evidence showing that a third party company licensed its intellectual property to AUO, that such third party company owned a patent that cites two other patents, and that both cited patents list the patent-in-suit.281 With these facts, the plaintiff claimed the existence of AUO’s knowledge of the patent-in-suit. However, the district court held it was not, because the case law provided “no example of a finding of constructive knowledge based on the listing of a patent on the
269 Id.
270 Id.
271 See id.
272 See id.
273 See id.
274 See id.
275 See Apeldyn Corp. v. AU Optronics Corp., 831 F. Supp. 2d 817, 820, 830-31 (D. Del.
2011) (hereinafter, “Apeldyn II”).
276 See id. at 830-31.
277 See id. at 830-31
278 See id. at 831
279 See id. at 832.
280 See id. at 831.
281 See id.
face of another patent, twice removed.”282 The district court further stated,
“There is simply no indication that constructive notice is meant to embrace the hundreds, if not thousands, of listed patents that would be generated in many cases by such an extrapolation.”283
The second theory was based on the willful-blindness standard.284 The plaintiff provided evidence showing that AUO was a large company with a lot of patents, that AUO had a big intellectual property group that is capable of monitoring patents, and that AUO’s intellectual property group did not collect competitors’ patents unless they were requested by AUO’s internal lawyers to do so.285 Based on these facts, the plaintiff asserted that AUO willfully blinded itself from knowing the direct infringing acts.286 However, the district court disagreed because these facts only showed that AUO was reckless or negligent.287
b. Ill. Tool Works, Inc. v. MOC Prods. Co.
In Ill. Tool Works, Inc., the district court denied the plaintiff’s motion for summary judgment for inducement.288 The plaintiff made two arguments both of which were rejected by the district court.289
The plaintiff and defendant were competitors in a niche industry of products for cleaning automotive parts.290 The plaintiff had one former employee who was one inventor of the patent-in-suit.291 This former employee was later hired by the defendant to develop the accused product. 292 So, both parties did not dispute about the knowledge of the patent-in-suit. The focus was the knowledge of induced direct infringement.293
The first argument was based on the defendant’s admitted fact that the accused product has a technical feature claimed in the patent-in-suit. Two theories were asserted. The plaintiff’s first theory was that because the defendant knew that the accused product had a patented technical feature, the defendant also knew the accused product infringed the patent-in-suit.294 The
282 Id.
283 Id.
284 See id.
285 See id.
286 See id.
287 See id.
288 See Ill. Tool Works, Inc., 2012 WL 727828, at *1.
289 See id. at *7-*9.
290 See id. at *1.
291 See id. at *2.
292 See id.
293 See id. at *7.
294 See id. at *8.
plaintiff’s second theory was based on the willful-blindness standard.295 The plaintiff asserted that the defendant took a deliberate action to avoid knowing the direct infringement.296 First, the plaintiff’s former employee was one inventor of the patent-in-suit and was responsible for developing the infringing product.297 If the defendant had avoided the infringement, it should have done the test for the infringing product.298
Contrarily, the defendant argued that the plaintiff had known the sales of the accused product but had not informed the defendant of the infringement.299 So, the defendant asserted that it “did not know and had no reason to suspect that use of its product infringed [the patent-in-suit].”300
While confirming that the knowledge requirement focuses on the defendant’s mind not the plaintiff’s inaction, the district court did weigh the plaintiff’s inaction, because of “viewing the evidence in the light most favorable to [the defendant].”301 The reasoning was that if the plaintiff had informed the defendant of the infringement of the patent-in-suit, the fact would suggest that the defendant subjectively believed a high probability of the infringement done by its product.302 But, actually, the plaintiff had not done so.303 On the other hand, when the defendant received the allegations of the infringement, it “redesigned its product and sought clearance from [the plaintiff’s] attorney that its redesign was not infringing.”304 Thus, the district court held that “once [the defendant] knew of a high probability of infringement, it took deliberate action to avoid infringing, not to avoid discovering whether it was infringing.”305
The second argument was based on the defendant’s litigation strategy.
The plaintiff asserted the non-infringement argument made for the inducement issue was not presented by the defendant for the issue of direct infringement.306 When developing the infringing products, the plaintiff’s former employee based his belief of non-infringement on the fact that the infringing product uses a particular nozzle that is allegedly not within the scope of the patent-in-suit. 307 However, when arguing the direct
295 See id.
296 See id.
297 See id.
298 See id.
299 See id.
300 Id.
301 Id.
302 See id.
303 See id.
304 Id.
305 Id.
306 See id. at *9.
307 See id.
infringement issues, the defendant did not raise the nozzle issue to support the assertion of non-infringement.308 Based on this litigation record, the plaintiff asserted that the defendant had known the direct infringement.309
The second argument was also rejected. The district court held that the defendant had “carried its burden to establish a genuine issue as to whether it had knowledge that the acts it induced were infringing.”310 The district court also declined to “infer such knowledge from [the defendant’s] litigation strategy.”311
c. Mikkelsen Graphic Eng’g Inc. v. Zund Am., Inc.
In Mikkelsen Graphic Eng’g Inc., the district court was requested by the plaintiff to reconsider a summary judgment decision of finding that the defendant was not liable for inducement.312 The request was made because the summary judgment of no inducement was followed by the Supreme Court’s Global-Tech decision.313 The district court did not change its decision because it held that the Global-Tech decision did not change the existing elements of inducement.314
The summary judgment was in favor of the defendant because the language of the patent-in-suit was reasonably disputed. The district court held that “[t]he most that [the defendant] could have intended was to induce [others] to commit acts that would constitute patent infringement if the patent was, at some point in the future, construed in a particular way.”315
D. JMOL Motion Cases