R.D. Jones, Stop Experts, Inc. et al v. Carmanah Technologies Corporation et al

MOTION to dismiss for failure to state a claim

M.D. Fla.September 15, 2016

UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA TAMPA DIVISION CASE NO. 16-cv-01690-MSS-AEP R.D. JONES, STOP EXPERTS, INC., and RRFB GLOBAL, INC., Plaintiffs, vs. CARMANAH TECHNOLOGIES CORPORATION and CARMANAH TECHNOLOGIES (US) CORPORATION, Defendants. / DEFENDANTS’ MOTION TO DISMISS WITH PREJUDICE COUNTS III AND IV OF THE FIRST AMENDED COMPLAINT Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 1 of 22 PageID 279 i TABLE OF CONTENTS Page I. INTRODUCTION ...............................................................................................................1 II. LEGAL STANDARD ..........................................................................................................3 III. ARGUMENT .......................................................................................................................4 A. Count III Should Be Dismissed With Prejudice Because Plaintiffs Again Fail to Factually Support the Knowledge and Specific Intent Requirements of Induced Infringement, and Their Newly Added Willful Blindness Allegations Are Likewise Deficient .........................................................................4 1. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to Specific Intent .........................................................................5 2. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to Knowledge ..............................................................................6 3. Plaintiffs Allege No Factual Support for Its Newly Added Recital as to Willful Blindness .................................................................................8 B. Count IV Should Be Dismissed With Prejudice Because Plaintiffs Again Fail to Factually Support the Knowledge Requirement of Contributory Infringement and Fail to Factually Support the No Substantial Non- Infringing Uses Requirement .................................................................................10 1. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to No Substantial Non-Infringing Use ......................................11 2. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to Knowledge that Any Accused Product is Designed to Infringe .......................................................................................................13 C. Claims III and IV Should Be Dismissed With Prejudice Because Plaintiffs Have Already Failed to Cure These Same Deficiencies in Pleading Indirect Infringement .............................................................................................14 IV. CONCLUSION ..................................................................................................................17 Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 2 of 22 PageID 280 ii TABLE OF AUTHORITIES Page(s) Cases Andrx Pharm., Inc. v. Elan Corp., PLC, 421 F.3d 1227 (11th Cir. 2005) ...............................................................................................15 Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) .................................................................................................................13 Ashcroft v. Iqbal, 556 U.S. 662 (2009) .........................................................................................................3, 6, 12 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ...................................................................................................................3 Best Med. Int'l, Inc. v. Accuray, Inc., 2011 U.S. Dist. LEXIS 23571 (W.D. Pa. Mar. 9, 2011) .........................................................16 In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012)................................................................................3, 11, 12, 13 Bionix Dev. Corp. v. Sklar Corp., 2009 U.S. Dist. LEXIS 96593 (E.D. Pa. Oct. 14, 2009) ..........................................................16 Bonutti Skeletal Innovations, LLC v. Globus Medical Inc., 2015 U.S. Dist. LEXIS 77492 (E.D. Penn. June 15, 2015) ................................................8, 10 Bonutti Skeletal Innovations, LLC v. Linvatec Corp., No. 12-cv-1379-ACC-TBS, D.I. 32 (M.D. Fla. Apr. 2, 2013) ..............................5, 7, 8, 12, 14 Brandywine Commc’ns Techs., LLC v. T-Mobile USA, Inc., 904 F. Supp. 2d 1260 (M.D. Fla. 2012) .........................................................3, 7, 11, 12, 13, 14 Cutsforth v. Renschler, 235 F. Supp. 2d 1216 (M.D. Fla. 2002) ...................................................................................16 DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) .........................................................................................4 Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) .........................................................................................................8, 9, 10 Grecia v. VUDU, Inc., 2015 U.S. Dist. LEXIS 16256 (N.D. Cal. Feb. 9, 2015) .........................................................15 Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 3 of 22 PageID 281 iii Intellectual Ventures I LLC v. Bank of Am., N.A., 2013 U.S. Dist. LEXIS 185691 (W.D.N.C. Oct. 30, 2013) .....................................................15 LaserDynamics USA LLC v. Cinram Group Inc., 2015 U.S. Dist. LEXIS 147562 (S.D.N.Y. Oct. 30, 2015) ..................................................7, 10 McRee v. Goldman, 2012 U.S. Dist. LEXIS 122250 (N.D. Cal. Aug. 28, 2012).....................................................15 MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369 (Fed. Cir. 2005)..................................................................................................4 Randall v. Scott, 610 F.3d 701 (11th Cir. 2010) ...................................................................................................3 Reed v. Chambersburg Area Sch. Dist. Found., 2014 U.S. Dist. LEXIS 35275 (M.D. Pa. Mar. 17, 2014) ........................................................15 Reiffin v. Microsoft Corp., 2012 U.S. Dist. LEXIS 53220 (N.D. Cal. Apr. 16, 2012) .......................................................16 In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008)..................................................................................................3 Zamora Radio LLC v. Last.FM, Ltd., 758 F. Supp. 2d 1242 (S.D. Fla. 2010) ......................................................................................4 Statutes 35 U.S.C. § 271(b) ...........................................................................................................................8 35 U.S.C. § 271(c) .....................................................................................................................8, 13 35 U.S.C. § 305 ..............................................................................................................................15 Other Authorities Fed. R. Civ. P. 12(b)(6)..........................................................................................................1, 3, 17 Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 4 of 22 PageID 282 1 Defendants Carmanah Technologies Corporation and Carmanah Technologies (US) Corporation (collectively, “Carmanah”) hereby move the Court to dismiss with prejudice Counts III and IV of the First Amended Complaint (ECF No. 24) filed by plaintiffs R.D. Jones, Stop Experts, Inc. and RRFB Global, Inc. (collectively, “plaintiffs”) for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. I. INTRODUCTION Carmanah filed a motion to dismiss for failure to state a claim on August 19, 2016 (ECF No. 21). Plaintiffs filed their First Amended Complaint on August 30, 2016 (ECF No. 24). The Court denied Carmanah’s motion as moot in view of the filing of the First Amended Complaint but permitted refiling of the motion if the First Amended Complaint did not affect the motion to dismiss (ECF No. 26). The First Amended Complaint is still deficient as set out below. Carmanah’s first motion to dismiss explained numerous failings in plaintiffs’ Complaint (ECF No. 1) to allege facts to support their threadbare allegations of indirect infringement of U.S. Pat. No. 9,129,540 (“the ’540 patent”). Plaintiffs’ First Amended Complaint again fails for the same reasons as did the original Complaint. As to active inducement in Count III, plaintiffs again fail to factually support their merely conclusory allegations as to specific intent to infringe and as to knowledge of infringement, as well as their newly added willful blindness allegations. Likewise, as to contributory infringement in Count IV, plaintiffs again fail to allege facts to support their conclusions as to no substantial non-infringing uses and as to knowledge that the accused products are especially made or adapted to infringe. Plaintiffs’ First Amended Complaint not only fails to cure the deficiencies of the original Complaint, but it also includes redundancy and misleading allegations. Such lack of care even in alleging facts known best to plaintiffs, such as the events within their own patent’s prosecution, demonstrate that further amendment should be foreclosed by the Court. Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 5 of 22 PageID 283 2 Plaintiffs filed six separate actions1 in this Court for infringement of their patent(s). In the case against Rainbow Distributors USA (“Rainbow”) and Electrotechnics Corporation (“ELTEC”) (Case No. 8-16-cv-1560 (M.D. Fla.) (transferred to the Eastern District of Texas, Case No. 2-16-cv-0832)), plaintiffs filed in this Court despite the fact that both Rainbow and ELTEC made no sale of any accused product in Florida and had no contacts to justify jurisdiction in Florida or venue in this District. Similarly, in the case against Intelligent Traffic Equipment Marketing, Ltd. (“ITEM”) (Case No. 8-16-cv-01679 (M.D. Fla.) (dismissed by plaintiffs and refiled in the Northern District of Texas, Case No. 3-16-cv-02318), plaintiffs filed that case despite the fact that ITEM made no sale of any accused product in Florida and had no contacts sufficient to justify jurisdiction in Florida or venue in this District. Furthermore, in the case against RTC Manufacturing, Inc. (Case No. 8-16-cv-01686 (M.D. Fla.)), there is a pending motion to dismiss for lack of personal jurisdiction for similar reasons. Plaintiffs have demonstrated a pattern of suing without any pre-filing investigation. In this case, plaintiffs sued in this Court despite the fact that they reside in the Southern District of Florida and filed a lawsuit against the same defendants as those here in the Southern District of Florida on a patent related to the patent in this suit. Plaintiffs have never explained why they did not file this litigation in the Southern District of Florida.2 1 See RD Jones, Stop Experts, Inc., et al. v. Carmanah Technologies Corporation, et al., Case No. 8-16-cv-01690; RD Jones, Stop Experts, Inc. et al. v. JS Foster Corp. d/b/a JSF Technologies, et al., Case No. 8-16-cv-01588; RD Jones, Stop Experts, Inc., et al. v. RTC Manufacturing, Inc., Case No. 8-16-cv-01686; R.D. Jones, Stop Experts, Inc., et al. v. Electrotechnics Corporation, et al., Case No. 8-16-cv-01560; RD Jones, Stop Experts, Inc., et al. v. Intelligent Traffic Equipment Marketing, Ltd., Case No. 8-16-cv-01679; RD Jones, Stop Experts, Inc., et al. v. Traffic Safety Corporation, Case No. 8-16-cv-01689. 2 It could be that plaintiffs are unhappy about the way the litigation in the Southern District of Florida has been proceeding. The claims of the patent involved in that lawsuit, the “parent” of the patent asserted here, have been invalidated by the Patent Office and the litigation has been stayed for two years now. Plaintiffs are attempting to convince the Patent Office to change its position on the invalidity issue. Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 6 of 22 PageID 284 3 II. LEGAL STANDARD Eleventh Circuit law governs the assessment of whether a plaintiff has adequately pled a patent infringement complaint. In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1331 (Fed. Cir. 2012); In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). For purposes of deciding a motion to dismiss for failure to state a claim under Rule 12(b)(6), courts accept as true the factual allegations in the complaint and draw all reasonable inferences in the light most favorable to the plaintiff. Randall v. Scott, 610 F.3d 701, 705 (11th Cir. 2010). However, the plaintiff's complaint must provide “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 556). A court is not required to accept as true a legal conclusion merely because it is labeled a “factual allegation” in the complaint; it must also meet the threshold inquiry of facial plausibility. Id. If the claim “merely pleads facts that are consistent with a defendant’s liability,” such claim “stops short of the line between possibility and plausibility.” In re Bill of Lading, 681 F.3d at 1332 (citing Twombly, 550 U.S. at 546). Thus, “[l]abels, conclusions and formulaic recitations of the elements of a cause of action are not sufficient” to meet this standard. Brandywine Commc’ns Techs., LLC v. T-Mobile USA, Inc., 904 F. Supp. 2d 1260, 1265 (M.D. Fla. 2012) (citing Twombly, 550 U.S. at 555). Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 7 of 22 PageID 285 4 III. ARGUMENT A. Count III Should Be Dismissed With Prejudice Because Plaintiffs Again Fail to Factually Support the Knowledge and Specific Intent Requirements of Induced Infringement, and Their Newly Added Willful Blindness Allegations Are Likewise Deficient “[I]nducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.” DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed. Cir. 2006). To establish a claim for induced infringement, a patentee must show that: (1) there has been direct infringement; (2) the alleged infringer knowingly induced infringement; and (3) the alleged infringer possessed specific intent to encourage another's infringement. Zamora Radio LLC v. Last.FM, Ltd., 758 F. Supp. 2d 1242, 1248 (S.D. Fla. 2010); MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005). For induced infringement, “mere knowledge of possible infringement by others does not amount to inducement; specific intent and actions to induce infringement must be proven.” DSU Medical Corp., 471 F.3d at 1305. Indeed, the Federal Circuit noted that the Supreme Court “has clarified that the intent requirement for inducement requires more than just intent to cause the acts that produce direct infringement. Beyond that threshold knowledge, the inducer must have [and plaintiff must plead] an affirmative intent to cause direct infringement.” DSU Medical Corp., 471 F.3d at 1306 (emphasis added) (citing Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 920-21, 923 (2005)). Plaintiffs’ First Amended Complaint, though more voluminous than the original pleading, again merely makes conclusory allegations, and lacks any factual support for the conclusory allegations as to Carmanah’s knowledge and any specific intent. Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 8 of 22 PageID 286 5 1. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to Specific Intent Count III lacks factual support for its bare recitation of active inducement’s specific intent element. Plaintiffs make the merely conclusory allegations that Carmanah had specifically intended that its customers infringe the ’540 patent: “CARMANAH’s advertisements, including but not limited to information on its website, instructs [sic] persons on how to use its RRFB products.” “CARMANAH intends that its RRFB products be used to control a traffic-directing device to provide improved driver compliance.” * * * “CARMANAH intended since prior to the filing of the Complaint herein, that its customers and third party users of its RRFB products operate such RRFB products in accordance with CARMANAH’s instructions.” * * * “CARMANAH has, since at least as early as the date specified in Paragraphs 61 through 99 above, intended that its customers and third party users of its RRFB products would directly infringe at least claim 6 of the ‘540 Patent.” “CARMANAH has, since at least as early as the date specified in Paragraphs 61 through 99 above, intended that its customers and third party users of its RRFB products would directly infringe at least claim 9 (as corrected by the Certificate of Correction) of the ‘540 Patent.” First Am. Cmpl. ¶¶ 112, 113, 115, 118, 119. Nothing in the First Amended Complaint, including Paragraphs 61-99 referenced in Paragraphs 118 and 119, allege any factual support for the allegation that Carmanah specifically intended its customers to infringe the ’540 patent. Plaintiffs’ mere allegations regarding Carmanah’s website and alleged instructions in Paragraphs 112 and 115 do not save its claim. In Bonutti Skeletal Innovations, LLC v. Linvatec Corp., allegations not unlike those in plaintiffs’ First Amended Complaint were held deficient to adequately plead induced infringement’s specific intent requirement. No. 12-cv-1379-ACC- Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 9 of 22 PageID 287 6 TBS, D.I. 32 at *9, (M.D. Fla. Apr. 2, 2013) (copy attached as Attachment A). More specifically, the plaintiff claimed that the defendants’ customers directly infringed the asserted patents by using the defendants’ products according to defendants’ instructions. Id. However, the court held that such allegations were insufficient: “instructions and videos, standing alone, are innocuous activities that do not suggest a ‘specific intent to encourage another’s infringement.’” Id. (quoting DSU Medical Corp., 471 F.3d at 1306). Similar considerations apply here, where plaintiffs’ allegations do no more than equate instructions with intent. Moreover, plaintiffs fail to point to any instance of alleged direct infringement by Carmanah’s customers. See, e.g., First Am. Compl. ¶ 119 (alleging only that Carmanah intended that its customers “would directly infringe,” without actually pointing to an act of direct infringement by Caramanah’s customers). For this reason alone, Count III should be dismissed with prejudice. See Iqbal, 556 U.S. at 678 (“Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.”). 2. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to Knowledge An independent ground for dismissing Count III is the failure of the Amended Complaint to allege facts to support the mere conclusion that Carmanah has actual knowledge of supposed infringement by its customers. “CARMANAH has actual knowledge, based at least on the facts in Paragraphs 61 through 99 above, that the acts of its customers and users of its RRFP products would infringe at least claims 6 and 9 (as corrected by the Certificate of Correction) of the ‘540 Patent.” First Am. Cmpl. ¶ 114. The First Amended Complaint, including Paragraphs 61-99 referenced in Paragraph 114, fails to allege any factual support that Carmanah knew its customers would infringe the ’540 Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 10 of 22 PageID 288 7 patent. However, plaintiffs’ actual allegation is that plaintiffs gave actual notice to Carmanah by providing charts that were allegedly directed to only a single claim element - the flashing limitation - as opposed to all the limitations of the claim. See First Am. Cmpl. ¶¶ 61-66 (alleged pre-suit charts same as those attached to original complaint (see Cmpl., Exs. A, B, D, E, G, and H)). One can infringe a patent claim only if all limitations of the claim are met. In LaserDynamics USA LLC v. Cinram Group Inc., the court dismissed the plaintiff’s claim of induced infringement for lack of sufficient allegations of knowledge. 2015 U.S. Dist. LEXIS 147562, *15 (S.D.N.Y. Oct. 30, 2015). There, the plaintiff sent letters to the defendant stating that the defendant’s products “include features recited in the claims” of the asserted patents, but this allegation was too tenuous to defeat the motion to dismiss. Id. at *14. In plaintiffs’ First Amended Complaint here, the direct notice required by LaserDynamics is also missing here. See id. at *14-15. Reviewing allegations with similar deficiencies as here, the Bonutti v. Linvatec court dismissed the plaintiff’s induced infringement claims for the additional reason that the plaintiff failed to recite any facts supporting knowledge of the alleged direct infringement. No. 12-cv- 1379-ACC-TBS, D.I. 32, at *9. That complaint included some factual allegations directed to the defendants’ knowledge of the patent and of alleged direct infringement by the defendants’ customers but, as here, contained no allegation that the defendants knew of its customers’ direct infringement. Id.; see Brandywine, 904 F.Supp.2d at 1269-70 (failing to recite any facts supporting conclusory allegation that defendant “actively and knowingly” induced infringement by its customers). Some courts have provided additional guidance to assess the sufficiency of allegations of knowledge for inducement. The court in another Bonutti suit -- Bonutti Skeletal Innovations, Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 11 of 22 PageID 289 8 LLC v. Globus Medical Inc. -- stated that, generally, courts use a two-step test: whether the plaintiff “(a) alerted the defendant, either orally or in writing, to the fact that it was inducing a third party to infringe the plaintiff’s patent, and (b) the plaintiff explained to the defendant how the induced acts constituted infringement.” 2015 U.S. Dist. LEXIS 77492, *18 (E.D. Penn. June 15, 2015) (citing Neology, Inc. v. Kapsch Trafficom IVHS, Inc., 2014 U.S. Dist. LEXIS 131568, *3-4 (D. Del. Sept. 14, 2014). There, the plaintiff recited no facts supporting the proposition that the plaintiff made an effort to inform the defendant that it was infringing or how its customers directly infringed. Id. at *18-19. Here, plaintiff s’ allegations fail under this test as well. Plaintiffs do not allege that they informed Carmanah how its customers supposedly infringe. Even their allegations supposedly directed at giving Carmanah notice of its alleged direct infringement in Paragraph 61-65, as discussed above, fail to explain Carmanah’s alleged infringement because that alleged communication was, at most, directed to a single claim limitation but not all of the limitations of the claim. Because plaintiffs’ First Amended Complaint again fails to allege that Carmanah had actual knowledge that its customers allegedly infringe the ’540 patent, the First Amended Complaint fails to state a claim of induced infringement. See id.; Bonutti v. Linvatec, No. 12-cv- 1379-ACC-TBS, D.I. 32, at *9. 3. Plaintiffs Allege No Factual Support for Their Newly Added Recital as to Willful Blindness Willful blindness can satisfy the knowledge requirement for active inducement under section 271(b) (and for contributory infringement under section 271(c)), even in the absence of actual knowledge. Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769 (2011). Willful blindness is a doctrine relied upon to establish inducement of infringement when it is clear that there was no knowledge or intent to infringe. Willful blindness requires the alleged inducer to Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 12 of 22 PageID 290 9 (1) subjectively believe there is a high probability that a fact exists, and (2) take deliberate actions to avoid learning of that fact. Id. Here, again, plaintiffs fail to allege any facts to support their conclusory allegations as to willful blindness. The most direct allegations include: “CARMANAH has, since at least as early as the date specified in Paragraphs 61 through 99 above, acted with willful blindness as to whether or not its customers and third party users of its RRFB products would infringe at least claim 6 of the ‘540 Patent.” “CARMANAH has, since at least as early as the date specified in Paragraphs 61 through 99 above, acted with willful blindness as to whether or not its customers and third party users of its RRFB products would infringe at least claim 9 (as corrected by the Certificate of Correction) of the ‘540 Patent.” First Am. Cmpl. ¶¶ 120, 121. These, however, are mere conclusions with no factual support. Even the few paragraphs that allege to be factual support for these conclusory allegations of willful blindness do not recite facts as to: (1) a subjective belief there is a high probability that a fact exists, and (2) deliberate actions taken to avoid learning of that fact. Global-Tech, 563 U.S. at 769. Instead, the First Amended Complaint merely recites: “On or about September 17, 2014, the United States Patent and Trademark Office informed CARMANAH’s attorney that at least one claim of U.S. Patent No. 8,269,654 was patentable notwithstanding all the prior art that had been identified as part of the reexamination proceeding.” “The United States Patent and Trademark Office expressly considered, inter alia, all of the prior art that had been identified as part of the reexamination proceeding when deciding to grant the ‘540 Patent.” “All prior art references that had been identified as part of the reexamination proceeding and expressly considered by the USPTO in that proceeding are printed on the ‘540 Patent itself.” “In response to the notice described above in Paragraphs 71 through 75, CARMANAH did not identify any prior art that would render any claim of the ‘540 Patent invalid.” “In response to the notice described above in Paragraphs 71 through 75, CARMANAH did not identify any basis upon which any claim of the ‘540 Patent would be invalid.” Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 13 of 22 PageID 291 10 “In response to the notice described above in Paragraphs 71 through 75, CARMANAH did not identify any basis upon which any claim of the ‘540 Patent was not infringed.” First Am. Cmpl. ¶¶ 74-79 None of these allegations, or any other allegation in the First Amended Complaint, is directed to the second requirement of willful blindness: taking deliberate actions to avoid learning of not only the ’540 patent, but also the alleged induced infringement. See Global-Tech, 563 U.S. at 769-71. For that reason alone, plaintiffs fail to properly allege willful blindness. See Bonutti v. Globus, 2015 U.S. Dist. LEXIS 77492, *23-24 (dismissing allegation of willful blindness where plaintiff failed to recite facts that defendant made any affirmative acts to avoid knowledge of its inducement). Moreover, as discussed at length below, paragraphs 77-79 are at best misleading, if not actual misrepresentations of the facts. See Section III.C, infra. One court has held that the plaintiff’s tenuous notice of alleged infringement prior to suit not only failed to establish knowledge, but it was also insufficient as to willful blindness. See LaserDynamics, 2015 U.S. Dist. LEXIS 147562, at *15 (merely alleging that defendant’s products “include features recited” in asserted patents is insufficient to support either knowledge or willful blindness). As discussed in Section III.A.2, supra, plaintiffs’ alleged pre-suit notice to Carmanah as recited in Paragraphs 61-65 of the First Amended Complaint are as deficient as to willful blindness as they are as to knowledge. See id. at *14-15. Accordingly, plaintiffs have failed to plead facts to support their allegations, and Count III of the First Amended Complaint should be dismissed with prejudice. B. Count IV Should Be Dismissed With Prejudice Because Plaintiffs Again Fail to Factually Support the Knowledge Requirement of Contributory Infringement and Fail to Factually Support the No Substantial Non- Infringing Uses Requirement Contributory infringement requires that a party has sold or has offered to sell “a material or apparatus for use in practicing a patented process,” and that the “material or apparatus” (1) is Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 14 of 22 PageID 292 11 material to practicing the invention, (2) has no substantial non-infringing uses, and (3) is known “to be especially made or especially adapted for use in the infringement of such patent.” Brandywine, 904 F. Supp. 2d at 1270 (quoting 35 U.S.C. § 271(c) and citing In re Bill of Lading, 681 F.3d at 1337). The First Amended Complaint fails to meet these pleading requirements for at least two reasons. 1. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to No Substantial Non-Infringing Use The First Amended Complaint’s continued lack of factual support for its conclusory allegations that there is no substantial non-infringing use for the accused product remains unchanged from the original Complaint. Specifically, the First Amended Complaint alleges only that: “CARMANAH does not know of any substantial use of the RRFB products other than to control a traffic-directing device to provide improved driver compliance.” “CARMANAH does not know of any substantial use of the RRFB products other than to infringe one or more claims of the ‘540 Patent.” “There is no substantial use of the CARMANAH RRFP products other than to infringe one or more claims of the ‘540 Patent.” “There is no substantial non-infringing use of the CARMANAH RRFP products.” “CARMANAH’s RRFP products, at least to the extent specified in Paragraph 128 hereof, are not staple articles of commerce.” * * * “CARMANAH’s RRFP products, at least to the extent specified in Paragraph 128 hereof, are not staple articles of commerce having substantial non-infringing use.” (First Am. Cmpl., ¶¶ 133-137, 142). Plaintiffs have added no substance over the allegations in their original Complaint, but instead merely restate the same allegations in six paragraphs instead Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 15 of 22 PageID 293 12 of the original two. Such conclusory allegations are insufficient to sustain this claim. Brandywine, 904 F. Supp. 2d at 1271; Iqbal, 556 U.S. at 678. The “[substantial non-infringing use] inquiry focuses on whether the accused products can be used for purposes other than infringement.” In re Bill of Lading, 681 F.3d at 1337 (emphasis in original). In In re Bill of Lading, the Federal Circuit affirmed that factual allegations of alleged direct infringement that the plaintiffs equated to a lack of substantial non- infringing use were legally deficient. 681 F.3d at 1339. There, the insufficient allegation was that “for [defendants’] trucking customers, the process for scanning and wirelessly transmitting bills-of-lading from the truck cab to the back office for the preparation of loading manifests has no other substantial non-infringing use.” Id. at 1337-38. In other words, the allegation amounted to no more than stating “if the products are used [in an infringing way], then the products have no substantial non-infringing use.” Id. at 1338 (emphasis in original). Even if practicing the at-issue patent were “the most logical or useful purpose” for the accused products, the plaintiff’s allegations did not translate to factual support for the allegation that the accused products had no substantial non-infringing use. Id. Likewise, in Bonutti v. Linvatec, the complaint asserted direct infringement by users of the defendants’ technology, but failed to plead that the accused products had no substantial non-infringing use. See No. 12-cv-1379-ACC-TBS, ECF No. 32, at *10 (dismissing claims of contributory infringement because plaintiff “failed to plead facts establishing a dearth of non-infringing uses”); see also Brandywine, 904 F.Supp. 2d 1271 (“Brandywine's allegations that the [accused products] ‘have no substantial non-infringing uses’, without more, is insufficient to support a claim of contributory infringement pursuant to § 271(c).”). Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 16 of 22 PageID 294 13 Like those cases, the First Amended Complaint fails to support plaintiffs’ allegation that Carmanah’s products have no substantial non-infringing use. This deficiency is fatal to plaintiffs’ contributory infringement claim. See In re Bill of Lading, 681 F.3d at 1339. For this reason alone, Count IV should be dismissed with prejudice. 2. Plaintiffs Continue to Fail to Provide Factual Support for Their Recital as to Knowledge that Any Accused Product is Designed to Infringe Count IV should also be dismissed with prejudice because plaintiffs again fail to state facts to support its conclusion that Carmanah knows that any of its products are allegedly especially made to infringe. Specifically, plaintiffs allege the following: “CARMANAH’s RRFB products, at least to the extent specified in Paragraph 128 hereof, were especially made to provide the flashing pattern claimed in the ‘540 Patent.” “CARMANAH’s RRFB products, at least to the extent specified in Paragraph 128 hereof, were especially adapted to provide the flashing pattern claimed in the ‘540 Patent.” “CARMANAH’s RRFB products, at least to the extent specified in Paragraph 128 hereof, were especially made or adapted to infringe one or more claims of the ‘540 Patent.” “CARMANAH’s RRFB products, at least to the extent specified in Paragraph 128 hereof, were especially made or adapted to provide the FHWA flashing pattern that falls within the scope of one or more claims of the ‘540 Patent.” First Am. Cmpl. ¶¶ 138-141. Under § 271(c), an accused infringer must know that the product is designed to infringe a patent. Brandywine, 904 F. Supp. 2d at 1270 (citing 35 U.S.C. § 271(c); In re Bill of Lading, 681 F.3d at 1337; Lucent Techs. v. Gateway, Inc., 580 F.3d 1301, 1320 (Fed. Cir. 2009)); see also Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964). As with induced infringement, and as described in Section III.A.2, supra, the First Amended Complaint completely fails to allege facts supporting Carmanah’s supposed knowledge of infringement of the ’540 patent with respect to claims of contributory infringement. See Section III.A.2, supra; Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 17 of 22 PageID 295 14 see also Brandywine, 904 F.Supp. 2d at 1270 (dismissing contributory infringement claim for failure to plead knowledge requirement where plaintiff’s inducement claim was similarly deficient as to knowledge); Bonutti v. Linvatec, No. 12-cv-1379-ACC-TBS, D.I. 32, at *9 (same). The First Amended Complaint also lacks any factual support that Carmanah had the requisite knowledge that the accused products were infringing any claim of the ’540 patent. At best, each of the above-referenced paragraphs makes additional merely conclusory allegations, but provides no factual support of any kind. Its merely conclusory allegations are directed to only one limitation (the flashing limitation) of the claims of the ’540 patent, despite the fact that each claim contains multiple limitations and these other limitations are not treated at all. Count IV should be dismissed also for this reason. C. Claims III and IV Should Be Dismissed With Prejudice Because Plaintiffs Have Already Failed to Cure These Same Deficiencies in Pleading Indirect Infringement In addition to failing to adequately allege facts to plausibly support every element of indirect infringement, plaintiffs’ First Amended Complaint includes numerous misstatements and mischaracterizations, reflecting plaintiffs’ carelessness in alleging Courts III and IV. For example, plaintiffs mischaracterize events during the reexamination of the ’654 patent. Among others allegations, plaintiffs state: “On or about September 17, 2014, as part of the reexamination proceeding [of the ’654 patent] referred to in Paragraph 71, the United States Patent and Trademark Office informed CARMANAH’s attorney that at least one claim of [the ’654 patent] was patentable.” * * * “In response to the notice described above in Paragraphs 71 through 75 [regarding the ’654 patent’s reexamination proceeding], CARMANAH did not identify any prior art that would render any claim of the ‘540 Patent invalid.” Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 18 of 22 PageID 296 15 (First Am. Cmpl. ¶¶ 73, 77; see also id. ¶¶ 74, 78, 79.) The first quotation (Paragraph 73) seemingly implies that the September 17, 2014, communication somehow affirmed the validity of at least one of the existing and original claims of the ’654 patent. It did not. In fact, plaintiffs fail to state that this communication was a final rejection from the U.S. Patent Office, finding that all of the ’654 patent’s existing and original claims on which the reexamination was made were rejected as unpatentable. See Reexam Control No. 90/013,007, “Reexam - Final Rejection” (Sept. 17, 2014).3 The only claims which were not canceled were those newly-added by plaintiff patent-owner’s amendment in response to the second non-final rejection of all claims requested for reexamination. (Id.) Meanwhile, the second quotation (Paragraph 77) implies that somehow Carmanah could respond to the U.S. Patent Office’s final rejection of plaintiffs’ ’654 patent’s original claims. It could not. The Patent Office proceeding referenced by plaintiffs is an ex parte proceeding: no party other than the patentee can participate in the proceeding at that point. See 35 U.S.C. § 305. Moreover, there are other factual recitations in these paragraphs that are simply false, including the allegation that all the prior art from the ’654 reexamination was expressly of record and considered in the ’540 patent prosecution. See First Am. Cmpl. ¶¶ 75- 76. These are all examples of plaintiffs’ recklessness and lack of care in its multiple filings. The Court may deny leave to amend where, among other reasons, further attempts at amendment would be futile. Andrx Pharm., Inc. v. Elan Corp., PLC, 421 F.3d 1227, 1236 (11th Cir. 2005) (citing Foman v. Davis, 371 U.S. 178, 182 (1962)); see also Grecia v. VUDU, Inc., 2015 U.S. Dist. LEXIS 16256, at *31-32 (N.D. Cal. Feb. 9, 2015); Reed v. Chambersburg Area Sch. Dist. Found., 2014 U.S. Dist. LEXIS 35275, at *48 (M.D. Pa. Mar. 17, 2014); Intellectual Ventures I LLC v. Bank of Am., N.A., 2013 U.S. Dist. LEXIS 185691, at *12-13 (W.D.N.C. Oct. 3 This Ex-Parte Reexamination is of the ’654 patent, as referenced in plaintiffs’ First Amended Complaint. A full copy of this Final Rejection, as well as the rest of the file history, is publicly available from the USPTO’s Patent Application Information Retrieval System (PAIR), at http://portal.uspto.gov/pair/PublicPair. Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 19 of 22 PageID 297 16 30, 2013); McRee v. Goldman, 2012 U.S. Dist. LEXIS 122250, at *10-11 (N.D. Cal. Aug. 28, 2012); Reiffin v. Microsoft Corp., 2012 U.S. Dist. LEXIS 53220, at *15 (N.D. Cal. Apr. 16, 2012); Best Med. Int'l, Inc. v. Accuray, Inc., 2011 U.S. Dist. LEXIS 23571, at *27 (W.D. Pa. Mar. 9, 2011); Bionix Dev. Corp. v. Sklar Corp., 2009 U.S. Dist. LEXIS 96593, at *9-10 (E.D. Pa. Oct. 14, 2009). Courts in this District have used the careless mistakes of a plaintiff in drafting a complaint as a factor in justifying dismissing a claim with prejudice. See Cutsforth v. Renschler, 235 F. Supp. 2d 1216, 1263 (M.D. Fla. 2002) (“It is recognized that the plaintiffs fouled-up one of their allegations by quoting language from the wrong press release. That sloppiness hardly seems to justify the opportunity to file another amended complaint.” (citations omitted)). Here, the futility of plaintiffs alleging indirect infringement is evident based on plaintiffs’ inability to cure their inadequate indirect infringement claims in response to Carmanah’s first motion to dismiss and the lack of care with which plaintiffs drafted their First Amended Complaint. Sections III.A-B, supra, show the same deficiencies from the original Complaint continuing in the First Amended Complaint. Despite Carmanah’s first motion to dismiss, putting plaintiffs on notice of the lack of factual support for its conclusory allegations, the majority of plaintiffs’ amendments nevertheless consist of redundant and additional conclusory allegations, again without any factual support whatsoever. The sloppy mistakes that plaintiffs made in drafting numerous paragraphs in the First Amended Complaint reflect the futility that plaintiffs would face in attempting to further amend. See Cutsforth, 235 F.Supp. 2d at 1263. For at least these reasons, the Court should deny any further opportunity to plaintiffs to amend and dismiss Counts III and IV of the First Amended Complaint with prejudice. Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 20 of 22 PageID 298 17 IV. CONCLUSION For the foregoing reasons, Carmanah respectfully requests the Court to grant its motion and dismiss with prejudice Counts III and IV of plaintiffs’ First Amended Complaint for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6). Dated: September 15, 2016 Respectfully submitted, By: /s/ Allen P. Pegg Allen P. Pegg allen.pegg@hoganlovells.com Fla. Bar No. 597821 HOGAN LOVELLS US LLP 600 Brickell Avenue, Suite 2700 Miami, FL 33131 Telephone: (305) 459-6500 Facsimile: (305) 459-6550 Jeffrey Huang (admitted pro hac vice) DORSEY & WHITNEY LLP Columbia Center 701 Fifth Avenue, Suite 6100 Seattle, WA 98104-7043 Telephone: (206) 903-8794 Facsimile: (206) 299-3594 huang.jeffrey@dorsey.com (Attorneys for Defendants Carmanah Technologies Corporation and Carmanah Technologies (US) Corporation) Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 21 of 22 PageID 299 18 CERTIFICATE OF SERVICE I hereby certify that on September 15, 2016, I electronically filed the foregoing with the Clerk of Court using CM/ECF, which will serve a Notice of Electronic Filing on all counsel of record. By: /s/ Allen P. Pegg Allen P. Pegg Fla. Bar No. 597821 allen.pegg@hoganlovells.com Case 8:16-cv-01690-MSS-AEP Document 30 Filed 09/15/16 Page 22 of 22 PageID 300 ATTACHMENT A Case 8:16-cv-01690-MSS-AEP Document 30-1 Filed 09/15/16 Page 1 of 14 PageID 301 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA ORLANDO DIVISION BONUTTI SKELETAL INNOVATIONS LLC, Plaintiff, v. Case No: 6:12-cv-1379-Orl-22TBS LINVATEC CORPORATION and CONMED CORPORATION, Defendants. ORDER This cause comes before the Court on the Motion to Dismiss (Doc. No. 28) of Defendants Linvatec Corporation and ConMed Corporation (“Defendants”), to which Plaintiff Bonutti Skeletal Innovations LLC (“Plaintiff”) responded in opposition (Doc. No. 29). Based on the reasoning contained herein, the Motion to Dismiss is granted. I. BACKGROUND The Second Amended Complaint (Doc. No. 27) dictates the relevant facts for this Motion to Dismiss. Plaintiff is a company associated with Dr. Peter M. Bonutti, an orthopaedic surgeon who is the inventor or co-inventor of more than 150 patented inventions. (Second Am. Compl. (Doc. No. 27) at ¶¶ 14-15.) Included among those patents are the nine at issue here (collectively, the “patents-in-suit”)1; the patents-in-suit “involve specialized procedures, instruments, systems, 1 The patents-in-suit include U.S. Patent Nos. 5,527,343 (“Suture Anchor”), 7,087,073 (“Method of Securing of [sic] Body Tissue”), 5,814,072 (“Method and Apparatus for Use in Anchoring a Suture”), 5,921,986 (“Bone Suture”), 8,147,514 (“Apparatus and Method for Securing a Portion of a Body”), 5,980,559 (“Suture Anchor”), 6,500,195 (“Method and Apparatus for Anchoring a Suture”), 6,638,279 (“Method of Positioning Body Tissue Relative to a Bone”), and 5,718,717 (“Suture Anchor”). (Id. at ¶¶ 5-13.) Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 1 of 13 PageID 1207ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 2 of 14 PageID 302 - 2 - kits and apparatuses invented by Dr. Bonutti relating to suture anchors and suture anchor related instruments used in certain surgical procedures . . . .” (Id. at ¶¶ 15-16.) Plaintiff asserts, on information and belief, that Defendants manufacture and sell suture anchors and suture anchor related instruments, and additionally make available instructions and/or videos to assist surgeons in using those products. (Id. at ¶¶ 17-18.) Plaintiff further claims that “[a]t least as early as 2005, Dr. Bonutti, either directly or through representatives, was in communication with certain ConMed entities regarding certain of Dr. Bonutti’s intellectual property rights.” (Id. at ¶ 19.) Plaintiff asserts that “as a result of this contact and communication between Dr. Bonutti and ConMed, as well as the activities of ConMed in the field of suture anchors, ConMed was aware of the patenting activities of Dr. Bonutti and had knowledge of Dr. Bonutti’s patent portfolio and the patents-in-suit.” (Id. at ¶ 20.) All nine counts assert claims of direct, indirect, and joint infringement. The Motion to Dismiss pertains only to the latter two. Counts I through IV and VII through IX are method claims, alleging, inter alia, that Defendants induced or contributed to the infringement of patented surgical methods by instructing physicians to use their devices in an infringing manner. (Second Am. Compl. at ¶¶ 31, 38, 44, 55, 76, 83, 90.) Counts III, V and VI assert apparatus claims, stating that Defendants encouraged medical professionals to use infringing instruments that they made, sold, offered, or imported. (Id. at ¶¶ 47, 62, 69.) All nine claims allege that Defendants indirectly infringed “by inducing infringement by others or contributing to infringement.” (See Id. at ¶¶ 27, 34, 41, 51, 58, 65, 72, 79, 86.) Additionally, all nine claims allege that Defendants infringed “jointly.” (Id.) Each count also concludes with an allegation, “on information and belief,” that Defendants’ infringement “is and has been willful and deliberate.” (See id. at ¶¶ 32, 39, 49, 56, 63, 70, 77, 84, 91.) The patents-in-suit are the only attachments to the Complaint. Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 2 of 13 PageID 1208ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 3 of 14 PageID 303 - 3 - II. LEGAL STANDARD Although Federal Circuit decisions provide much of the substantive law of patent disputes, regional circuit law governs purely procedural issues arising in patent cases. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). The standard for a motion to dismiss is one such purely procedural issue. For purposes of deciding a motion to dismiss for failure to state a claim under Rule 12(b)(6), the Court accepts as true the factual allegations in the complaint and draws all reasonable inferences in the light most favorable to the Plaintiff. Randall v. Scott, 610 F.3d 701, 705 (11th Cir. 2010). “Generally, under the Federal Rules of Civil Procedure, a complaint need only contain ‘a short and plain statement of the claim showing that the pleader is entitled to relief.’” Id. (quoting Fed. R. Civ. P. 8(a)(2)). However, the Plaintiff’s complaint must provide “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 556). Thus, the Court is not required to accept as true a legal conclusion merely because it is labeled a “factual allegation” in the complaint; it must also meet the threshold inquiry of facial plausibility. Id. III. ANALYSIS Defendants seek to dismiss Plaintiff’s claims of induced, contributory, willful, and joint infringement. In support of their Motion, Defendants argue that the Complaint insufficiently pleaded the requisite pre-suit knowledge of the patents-in-suit and their infringement, as well as several of the other required elements for induced, contributory, and willful infringement. Defendants further assert that Plaintiff failed to plead any of the elements of joint infringement. Plaintiff argues that pre-suit knowledge need not be pleaded in the Complaint, that in any event it Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 3 of 13 PageID 1209ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 4 of 14 PageID 304 - 4 - effectively pleaded knowledge, and that it fulfilled the pleading requirements for each cause of action. The Court will address these arguments in turn. A. Indirect Patent Infringement and Pre-Suit Knowledge of the Patents-in-Suit Patent infringement is defined by statute and can occur directly or indirectly. 35 U.S.C. § 271. Direct patent infringement requires “no more than the unauthorized use of a patented invention.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2065 n.2 (2011); see 35 U.S.C. § 271(a) (“Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”). There is no requirement of knowledge or intent in the statutory definition. Id. Indirect infringement, on the other hand, boils down to “the aiding and abetting of direct infringement by another party,” and can take two forms under § 271. Id. at 2067. First, “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b) (emphasis added). Second, [w]hoever offers to sell or sells within the United States or imports into the United States a component of a patented [invention] . . . constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. Id. at § 271(c) (emphasis added). Thus the two forms of indirect infringement are induced infringement and contributory infringement. Although direct infringement is a strict liability violation, Global-Tech, 131 S. Ct. at 2065 n.2, indirect infringement requires “at least some intent.” Id. at 2065. The Supreme Court previously held, in the context of § 271(c) only, that a violator must know “that the combination for which his component was especially designed was both patented and infringing.” Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964) (emphasis added). More Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 4 of 13 PageID 1210ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 5 of 14 PageID 305 - 5 - recently, the Supreme Court adopted the same standard - that a defendant must possess knowledge of both the patent’s existence and the infringing nature of the induced act(s) - with respect to alleged violations of § 271(b). Global-Tech, 131 S. Ct. at 2067-68 (“. . . § 271(c) requires knowledge of the existence of the patent that is infringed. Based on this premise, it follows that the same knowledge is needed for induced infringement under § 271(b). . . . Accordingly, we now hold that induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.”). The only distinction between the Court’s recent decision and the Aro holding is that “willful blindness” to the existence of a patent is also sufficient to establish knowledge thereof for a violation of § 271(b). Id. at 268, 270-71 (defining a willfully blind entity as “one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts”). Plaintiff argues that pre-suit knowledge of the relevant patents and infringing activity is not required, but if it is, that the Complaint contains adequate facts to allow the Court to draw a reasonable inference that Defendants possessed knowledge of both the existence of the patents- in-suit and of their infringement by third parties. Plaintiff first directs the Court’s attention to the Federal Circuit’s decision in In re Bill of Lading Transmission and Processing System Patent Litigation, where the Federal Circuit reversed a district court’s dismissal of several amended complaints alleging indirect infringement. 681 F.3d 1323 (Fed. Cir. 2012). Plaintiff suggests that the district court was reversed because it dismissed the complaints for failure to allege pre-suit knowledge of the relevant patent. (Pl.’s Mem. Opp’n Mot. Dismiss (Doc. No. 29) at p. 16.) A close reading of the case belies that assertion. The individual complaints in Bill of Lading specifically alleged that the defendants learned of the patent-in-suit “at the latest” or “if not earlier” than when served with Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 5 of 13 PageID 1211ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 6 of 14 PageID 306 - 6 - the complaints, indicating that the defendants had pre-suit knowledge. 681 F.3d at 1343, 1345 (emphasis added). More importantly, the district court dismissed the complaints after concluding that they “failed to state a claim for induced infringement because . . . [they] relied upon ultimate inferences that the district court found ‘implausible and unreasonable’” under Twombly and Iqbal. Id. at 1340. The Federal Circuit reversed, finding that the Complaints satisfied Rule 8(a) after reviewing specific factual allegations in the complaints. Id. at 1341-46. The term “pre-suit” does not even appear in the decision. A more recent Federal Circuit decision, entered after the parties submitted their memoranda of law, seems to put the controversy to rest. In SynQor, Inc. v. Artesyn Technologies, Inc., a panel of the Federal Circuit affirmed a district court’s denial of judgment notwithstanding the verdict after finding that the jury instructions on contributory and induced infringement correctly “required actual knowledge of the patent” for a finding of liability, and the “jury’s finding of liability for contributory infringement demonstrate[d] the jury found each Defendant had actual knowledge of the [relevant] Patent prior to suit.” --- F.3d ---, 2013 WL 950743, at *9 (Fed. Cir. Mar. 13, 2013) (emphasis added). This holding is in accord with a previous decision in this district, Brandywine Communications Technologies, LLC v. T-Mobile USA, Inc., which correctly identified the logical inconsistency between the Global-Tech holding (the plaintiff must allege that the defendant has actual knowledge of or willful blindness to the patent) and allowing the complaint to provide initial notice of the patent’s existence. --- F. Supp. 2d ---, 2012 WL 5266049, at *7 (M.D. Fla. Oct. 24, 2012). If post-suit notification were permissible, then the knowledge / willful blindness requirement would be meaningless - of course alleged infringers have actual knowledge of the patent(s) at issue once they have received the complaint.2 The 2 “Prior to suit” does not mean prior to the current iteration of the Complaint. If, as Plaintiff suggests, failure to allege pre-suit knowledge could be cured merely by filing another complaint (without alleging new facts), then the knowledge requirement would be superfluous. Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 6 of 13 PageID 1212ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 7 of 14 PageID 307 - 7 - Court adopts the reasoning of Brandywine and SynQor, and holds that pre-suit knowledge of the existence of the relevant patent and its infringement must be alleged in a complaint for indirect infringement. The Court must now determine whether the Complaint alleged pre-suit knowledge of both the existence and infringement of the patents-in-suit, and if so, whether those allegations allow the Court to infer a reasonably plausible claim to relief. “[I]nducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.” DSU Med. Corp. v. JMS Co., Ltd., 471 F. 3d 1293, 1306 (Fed. Cir. 2006) (citation and quotation marks omitted). A valid claim for induced infringement must allege, with some factual support, that “(1) there has been direct infringement; (2) the alleged infringer knowingly induced infringement; and (3) the alleged infringer possessed specific intent to encourage another’s infringement.” Zamora Radio, LLC v. Last.FM, Ltd., 758 F. Supp. 2d 1242, 1248 (S.D. Fla. 2010) (citing MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005)). It is well settled that “inducement gives rise to liability only if the inducement leads to actual infringement. . . . [thus] there can be no indirect infringement without direct infringement. . . . [because] [t]here is no such thing as attempted patent infringement.” Akamai Tech., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1308 (Fed. Cir. 2012) (en banc) (per curiam) (internal citations omitted). Plaintiff clearly alleged that Defendants had knowledge of the patents-in-suit before the Complaint was filed. Each count includes the following language: “On information and belief, Defendants had and continue to have knowledge and are aware of Dr. Bonutti’s patents, including the [particular] patent.” (Second Am. Compl. at ¶¶ 30, 37, 48, 54, 61, 68, 75, 82, 89.) The question shifts to whether this allegation has a sufficient factual basis. Plaintiff alleged that Dr. Bonutti’s patents “relat[e] to suture anchors and suture anchor related instruments used in Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 7 of 13 PageID 1213ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 8 of 14 PageID 308 - 8 - certain surgical procedures, including, for example, bone and joint fixation and body-tissue re- attachment.” (Second Am. Compl. at ¶ 16.) Next, Plaintiffs state that Defendants create and sell “suture anchors and/or suture anchor related instruments and products used in . . . surgical procedures.” (Id. at ¶ 17.) Plaintiff states that Defendants provide “instructions for use and/or videos on surgical techniques, including . . . [for devices] which use [Defendants’] suture anchors and/or suture anchor related instruments and products.” (Id. at ¶ 18.) Plaintiff makes much of its factual allegations that “[a]t least as early as 2005, Dr. Bonutti, either directly or through representatives, was in communication with certain ConMed entities regarding certain of Dr. Bonutti’s intellectual property rights,” (Id. at ¶ 19), and “as a result of this contact and communication between Dr. Bonutti and ConMed, as well as the activities of ConMed in the field of suture anchors, ConMed was aware of the patenting activities of Dr. Bonutti and had knowledge of Dr. Bonutti’s patent portfolio and the patents-in-suit,” (Id. at ¶ 20). Despite drawing all reasonable inferences in favor of Plaintiff, it is apparent that these facts, taken as true, do not permit the Court to infer that Defendants had knowledge of the patents-in-suit prior to the commencement of this action. Plaintiff established that Defendants create products that are similar to those to which Dr. Bonutti’s patents apply, with similar methods of use. The fact that Defendants provide instructions and/or videos with respect to their products is unsurprising and largely irrelevant, without more, to determining whether Plaintiff was aware of the existence of applicable patents. The Complaint does not present any facts about the suture anchor market or the devices. Plaintiff’s reference to prior connections between Defendants and Dr. Bonutti does not allow the Court to infer that Defendants possessed actual knowledge of the patents-in-suit for two reasons. First, the allegation is too vague: there is no indication that Dr. Bonutti or his representatives discussed the patents-in-suit, or for that matter any patents at all. Second, the alleged communication took place before two of the asserted Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 8 of 13 PageID 1214ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 9 of 14 PageID 309 - 9 - patents were issued, which makes it impossible for Plaintiff to have conveyed actual knowledge, at least as to those patents, in 2005. (See Second Am. Compl. at Exs. B, E.) In its Memorandum in Opposition, Plaintiff includes substantially more detailed facts (see pp. 12-13); the Court declines to take judicial notice of these claims without providing Defendants with an opportunity to respond, but will grant Plaintiff leave to file a Third Amended Complaint to include those and any other relevant facts. Plaintiff also failed to allege that Defendants had actual knowledge of infringement by the medical professionals using their products and instructions. First, it is impossible for the Court to infer that Defendants knowingly induced infringement if there is not a sufficient allegation that Defendants had knowledge of the existence of the patents-in-suit. There is some factual support for the direct infringement that Defendants allegedly induced. Plaintiff states that “medical professionals have infringed and continue to infringe the [patents-in-suit] directly . . . by . . . using [Defendants’] suture anchors and/or suture anchor related instruments and products . . . in the United States in a manner that practices the method of at least [certain] claim[s] [of the relevant patent].” (Second Am. Compl. at ¶ 29; see also id. at ¶¶ 36, 43, 53, 60, 67, 74, 81, 88 (similar allegations).) The factual statements concerning Defendants’ use of instructions and videos allows the Court to assume, at this stage in the litigation, that various “medical professionals” may have directly infringed the patents-in-suit by using the devices in a particular manner. However, that is an insufficient factual basis to infer that Defendants knowingly induced those medical professionals to infringe the patents-in-suit. Merely including instructions and videos, standing alone, are innocuous activities that do not suggest a “specific intent to encourage another’s infringement.” DSU Med. Corp., 471 F. 3d at 1306. These claims are not incurable; Plaintiff could theoretically supplement its claims with facts addressing the Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 9 of 13 PageID 1215Case 8:16-cv-01690-MSS-AEP Document 30-1 Filed 09/15/16 Page 10 of 14 PageID 310 - 10 - shortcomings identified above. Therefore, the Court concludes that Plaintiff’s induced infringement claims are due to be dismissed without prejudice. B. Contributory Infringement As previously discussed, a claim for contributory infringement under 35 U.S.C. § 271(c) requires Plaintiff to plausibly allege that Defendants had actual knowledge of the patents-in-suit before the instant litigation. Aro Mfg., 377 U.S. at 488 (holding that a contributory infringer must know “that the combination for which his component was especially designed was both patented and infringing” (emphasis added)); SynQor, Inc., 2013 WL 950743, at *9 (holding that a jury must find that the defendant had actual knowledge of the relevant patent “prior to suit” in order to find liability for contributory infringement). Thus the Court’s finding that Plaintiff failed to provide sufficient factual support for its allegation concerning Defendants’ pre-suit knowledge of the patents-in-suit is sufficient to dismiss the contributory infringement claim as well. In addition, a claim for contributory infringement requires Plaintiff to “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 (citing Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005)). The category of substantial non- infringing uses is a broad one, encompassing any use that is “not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.” Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009). Plaintiff correctly asserts that it pleaded facts tending to show that the accused devices may have been designed to be used in a manner that infringes Dr. Bonutti’s method patents, but this is not the relevant issue. “[T]he inquiry focuses on whether the accused products can be used for purposes other than infringement.” Bill of Lading, 681 F.3d at 1338 (emphasis in original). Plaintiff has failed to plead any facts suggesting a dearth of non- Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 10 of 13 PageID 1216ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 11 of 14 PageID 311 - 11 - infringing uses; as such, the Complaint will be dismissed with leave to amend to provide such facts. C. Willful Infringement Pursuant to 35 U.S.C. § 284, enhanced damages are available where there is a finding of willful infringement. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc. 682 F.3d 1003, 1005 (Fed. Cir. 2012). To prove willful infringement, the damaged party must satisfy a two-pronged test: “[A] patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Once the “threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer.” Id. (quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc) (internal citations omitted)). It is impossible for Plaintiff to meet this standard under the current Complaint, which fails to allege sufficiently that Defendants were aware of the existence of the patents-in-suit. This count will be dismissed with leave to amend for failure to plead facts demonstrating Defendants’ knowledge or obvious neglect of an objectively high risk of patent infringement. D. Joint Infringement Joint infringement “occurs when a method claim is directly infringed by the joint actions of several parties.” Brandwine Commc’ns Tech., LLC v. Casio Computer Co., Ltd., --- F. Supp. 2d ---, 2012 WL 6043819, at *10 (M.D. Fla. Dec. 5, 2012). The law governing joint infringement claims has been a subject of recent Federal Circuit review, but the ground on which dismissal of Plaintiff’s claim rests remains steady. Binding precedent holds that “for a party to be liable for direct patent infringement under 35 U.S.C. § 271(a), that party must commit all the acts necessary to infringe the patent, either personally or vicariously.” Akamai, 692 F.3d at 1307 Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 11 of 13 PageID 1217ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 12 of 14 PageID 312 - 12 - (citations omitted). Where multiple parties are accused of jointly violating a method claim, “the accused infringer must perform all the steps of the claimed method, either personally or through another acting under his direction or control.” Id. Plaintiff argues that the “direction or control” condition, which essentially requires a principal-agent relationship between the parties, is no longer good law. In Akamai, a majority of the Federal Circuit, sitting en banc, held that a party may be liable for induced infringement on a method patent even if no single entity performed each step of the patented method. Id. at 1308-09. Although the majority opinion was subject to a lengthy dissent identifying possible consequences for induced infringement jurisprudence, the court left unchanged the standards governing direct liability. Id. at 1307 (“Because the reasoning of our decision today is not predicated on the doctrine of direct infringement, we have no occasion at this time to revisit any of those principles regarding the law of divided infringement as it applies to liability for direct infringement under 35 U.S.C. § 271(a).”). Plaintiff recognizes this fact, yet still encourages this Court to create precedent for finding liability under 35 U.S.C. § 271(a) for divided infringement. The Court declines to do so because the “direction and control” prong of the standard for joint direct infringement is still good law. Plaintiff’s joint infringement claims are dismissed for want of factual allegations tending to show that medical professionals (or any other parties) were acting pursuant to the direction and control of Defendants when they allegedly infringed Dr. Bonutti’s patents. As before, Plaintiff may re-plead these claims with additional factual allegations. IV. CONCLUSION Based on the foregoing, it is ordered as follows: 1. Defendants Linvatec Corporation and ConMed Corporation’s Motion to Dismiss (Doc. No. 28), filed January 7, 2013, is GRANTED. Plaintiff Bonutti Skeletal Innovations, Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 12 of 13 PageID 1218ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 13 of 14 PageID 313 - 13 - LLC’s claims alleging induced infringement, contributory infringement, willful infringement, and joint infringement are hereby DISMISSED without prejudice. 2. Plaintiff is granted leave to amend its Complaint before April 17, 2013. An amended complaint offers Plaintiff the chance to remedy the pleading deficiencies identified herein, not to add new claims. Failure to file an amended complaint by April 17, 2013 may result in the dismissal of this case without further notice. DONE and ORDERED in Chambers, in Orlando, Florida on April 2, 2013. Copies furnished to: Counsel of Record Unrepresented Parties Case 6:12-cv-01379-ACC-TBS Document 32 Filed 04/02/13 Page 13 of 13 PageID 1219ase 8:16-cv-01690-MSS-AEP t 0-1 Filed 09/15/16 Page 14 of 14 PageID 314