NY Patent Decisions Blog

Judge Preska Allows Laryngoscope Case to Proceed, Albeit With Fewer Claims

On September 2, 2021, United States District Judge Loretta A. Preska (S.D.N.Y.) granted in part and denied in part Defendants’ motion for judgment on the pleadings in Berall v. Pentax of America, Inc., et al.  All in all, as set forth below, the decision was a mixed bag for both Plaintiff and Defendants.


Plaintiff and emergency-room physician, Dr. Jonathan Berall (“Berall” or “Plaintiff”) brought claims for direct, indirect, and willful infringement of U.S. Patent No. 5,827,178 (“the ’178 Patent”) against Defendants Hoya Corp. (“Hoya”), Hoya Digital Solutions Corp. (“Hoya Digital”), and Pentax of America, Inc. (“Pentax”) (collectively, “Defendants”).  The ’178 Patent covers something known as a laryngoscope, or a medical device used for intubation by providing an oxygen tube directly into a patient’s trachea.  Berall filed the instant lawsuit more than a decade ago claiming that Hoya’s device—the Airway Scope (“AWS”)—infringed certain claims of the ’178 Patent.  The case was stayed pending the outcome of a reexamination proceeding which ultimately confirmed the patentability of the asserted claims.

Defendants moved for judgment on the pleadings on various grounds that Plaintiff has not adequately alleged direct infringement, indirect infringement, or willfulness.

Direct Infringement

The Court quickly dismissed Defendants’ assertions that Plaintiff had not properly pleaded infringement of the ’178 Patent.  Citing the liberal pleading standard, Judge Preska found that Berall easily passed the test by alleging that the AWS product embodied the asserted claims of the patent-in-suit; by appending the ’178 Patent, the PTO re-examination papers, and annotated photos of and articles regarding the accused product; and by describing aspects of the AWS product.

However, the Court found that Berall had not sufficiently pleaded that the only activity that Defendant Hoya undertook (manufacturing the accused produced) took place in the United States—a prerequisite for direct infringement against Hoya.  Indeed, Plaintiff acknowledged that Hoya was a Japanese company with its principal place of business in Japan.  Accordingly, Judge Preska dismissed those claims as to Hoya.

Indirect Infringement

In addressing the allegations of induced infringement, the Court focused on two issues: (i) Defendants’ knowledge of the alleged infringement and (ii) Defendants’ inducement of downstream actors.  As to the former, that Court found that the Complaint was “flush with allegations of the Defendants’ knowledge of the alleged infringement”, e.g., allegations that Pentax became aware of the ’178 Patent in 2000 when Dr. Berall spoke with two Pentax employees at an anesthesiologist conference.  As to the latter, the Court determined that the Plaintiff pleaded sufficient facts suggesting that the Defendants induced certain downstream actors to infringe the ’178 Patent—including by “providing advertisements…or other materials to their customers encouraging the use of the [accused product] for intubations ….”  Berall v. Pentax of Am., Inc., 2021 WL 3934200, at *7 (S.D.N.Y. Sept. 2, 2021).

Turning then to contributory infringement, the Court sided with Defendants, finding that Plaintiff’s claims should be dismissed.  To properly allege contributory infringement, Plaintiff must plead that (1) “there is direct infringement,” (2) “the accused infringer had knowledge of the patent,” (3) “the component has no substantial noninfringing uses,” and (4) “the component is a material part of the invention.”  Id. at *8 (internal quotes and citation omitted) (emphasis added).  The Court’s determination rested on the fourth element.  In short, “the purpose of a contributory infringement claim is to address the situation where a seller would sell a component which was not itself technically covered by the claims of a product or process patent but which had no other use except with the claimed product or process.”  Id. (internal quotes and citation omitted).   Since Plaintiff had not alleged that the accused AWS product was a “component part of some other patented invention,” his claim to contributory infringement fell short.  Id.

Willful Infringement

Finally, the Court rejected Defendants’ motion to dismiss Plaintiff’s willful infringement claims.  Relying primarily on Halo, Judge Preska noted that Plaintiff need only plausibly allege that Defendants “deliberately or intentionally infringed a patent-in-suit after obtaining knowledge of that patent and its infringement.” Id. at *9 (citation omitted).  Here, according to the Court, that burden was met:  Plaintiff alleged that Defendants knew about the ’178 Patent in 2000; were aware that the accused product infringed in 2010; and then manufactured the accused product anyway.  Id. 

The case is Berall v. Pentax of America, Inc., et al., No. 10-cv-5777(LAP) (S.D.N.Y.).