Judge Netburn Finds Complaint Doesn’t Need to Attach Photographs of Accused Exercise Devices To Adequately Plead Direct Infringement
On August 7, 2020, Magistrate Judge Sarah Netburn (S.D.N.Y.) recommended that Defendants’ Motion to Dismiss the Complaint of Plaintiff William Araujo (“Plaintiff”) for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6) be granted with respect to induced patent infringement, but denied with respect to the allegations of direct infringement.
Plaintiff owns U.S. Patent No. 9,446,276 (“the ’276 patent), which is directed to a device for assisting a user in doing sit-ups and abdominal crunches. Plaintiff alleges that defendants E. Mishan & Sons, Inc. et al. (“Defendants”) infringe the ’276 patent, both directly and by inducement, by manufacturing, marketing, and selling two devices, the Ab Rocket Twister and the Ab Rocket. Defendants filed a motion to dismiss, claiming that Plaintiff failed to meet the pleading standards under the Federal Rules of Civil Procedure.
Judge Netburn noted that “a complaint for direct infringement survives a motion to dismiss if it: 1) attaches the asserted patents to the complaint, 2) specifically identifies the accused products and attaches photographs of them to the complaint, and 3) alleges that ‘the accused products meet each and every element of at least one claim’ of the asserted patents.” Plaintiff’s Complaint satisfied these requirements because: 1) a copy of the ’276 patent was attached to the Complaint; 2) there was an explanation of the accused products; and 3) the accused products were alleged to infringe at least claim 1 of the ’276 patent. The Complaint also included a claim chart explaining how Ab Rocket infringes claim 1. Judge Netburn noted that although photographs of the accused products were not attached, the products are “sufficiently identified to give Defendants notice of the direct infringement claims.” As such, Judge Netburn determined that Plaintiff provided enough information in the Complaint to plausibly allege that the accused products infringe claim 1 of the ’276 patent.
However, Judge Netburn held that Plaintiff did not sufficiently plead inducement. A claim for induced infringement requires the Plaintiff to show: “1) there has been a direct infringement; 2) that the alleged infringer knowingly induced infringement; and 3) that the alleged infringer possessed specific intent to encourage another’s infringement.” Here, the Complaint alleged that Defendants induced infringement by “specifically encouraging and inducing others to practice the patented invention within the United States.” Judge Netburn noted that “Plaintiff does not allege that Defendants had knowledge of the Plaintiff’s patents at the time it began manufacturing, marketing, or selling the Accused Products as is required to state a claim for inducing infringement.” As such, Judge Netburn recommended that Plaintiff’s claim for induced infringement be dismissed.
The case is Araujo v. E. Mishan & Sons, Inc., No. 19-cv-5785 (GHW)(SN) (S.D.N.Y. Aug 7, 2020)