Summary
This memorandum and order from the U.S. District Court for the District of Massachusetts resolves a defendant's motion to dismiss a patent infringement complaint under Federal Rule of Civil Procedure 12(b)(6). The court examines whether importing a medical device for trade show demonstrations satisfies the direct infringement standard under 35 U.S.C. § 271(a), analyzing pleading sufficiency across two different patents. The motion is denied in part for one patent where commercial intent was adequately pleaded, but granted in part for the second patent due to a lack of factual allegations linking the defendant's conduct to the patent's term.
Topics
Practice areas
Questions Presented
- Whether the complaint plausibly alleged direct infringement of the '592 Patent based on importation, demonstration, and related sales activity.
- Whether conduct occurring before issuance of the '497 Patent could support direct infringement liability under 35 U.S.C. § 271(a).
- Whether the complaint plausibly alleged post-filing knowledge of the '497 Patent for indirect and willful infringement claims.
- Whether the complaint plausibly alleged induced infringement under 35 U.S.C. § 271(b).
- Whether the complaint plausibly alleged contributory infringement under 35 U.S.C. § 271(c).
- Whether the complaint plausibly alleged willful infringement.
Holdings
- The complaint plausibly alleged direct infringement of the '592 Patent because it alleged that E-Scopics imported the accused product before or around a trade conference and advertised that it would begin taking orders for the product.
- The complaint did not state a direct infringement claim under § 271(a) based on the alleged November 2023 importation because the '497 Patent was not issued until May 14, 2024.
- The initial complaint could provide knowledge of the '497 Patent for post-filing indirect and willful infringement, but liability based on that knowledge begins no earlier than the filing of the complaint.
- The complaint plausibly stated induced infringement claims concerning both asserted patents.
- The complaint plausibly stated contributory infringement claims concerning both asserted patents.
- The complaint plausibly stated willful infringement claims concerning both asserted patents.
Key quotations
“Absent any indication from the Federal Circuit that more than an act of importation, regardless of the purpose, is required for liability under § 271(a) and given the language of the statute, the Court will not require such here.” (III.A.1)
“On balance, the Court agrees with the majority approach and sees no reason why the Complaint cannot serve as knowledge for any subsequent acts of indirect or willful infringement, particularly at this preliminary stage.” (III.B.2)
“Accordingly, Defendants’ Motion, [ECF No. 20], is DENIED as to the ’592 Patent (Count I). It is GRANTED as to ’497 Patent’s (Count II) direct infringement claim but DENIED as to the indirect and willful infringement claims.” (IV)
Factual background
Echosens owns the '592 Patent, issued July 4, 2023, and the '497 Patent, issued May 14, 2024, concerning devices and methods for measuring viscoelastic properties of a medium such as a liver. E-Scopics allegedly imported and demonstrated its Hepatoscope device at a Boston medical conference in November 2023 and advertised that it would begin taking orders for the device. Echosens also alleged that E-Scopics marketed the Hepatoscope in the United States, used distributors or service providers, and provided marketing materials and a user manual describing allegedly infringing uses.
Procedural history
Echosens filed the complaint on May 24, 2024, asserting infringement claims concerning the '592 Patent and the '497 Patent. E-Scopics moved to dismiss on August 1, 2024. After briefing and supplemental briefing in lieu of a hearing, the court granted the motion in part and denied it in part.