A Blog About Intellectual Property Litigation and the District of Delaware

Artist's illustration of one of the parties' briefs.
Artist's illustration of one of the parties' briefs. Carl Tronders, Unsplash

I wanted to call out the interesting quote in the title, which comes from an opinion Judge Noreika issued on Friday granting-in-part post-trial motions in a patent case.

The quote is in the context of a motion for JMOL of no post-suit indirect infringement because the accused infringer didn't encourage users to infringe. The Court was very disappointed in the parties' briefing:

[T]he Court must still address Defendants’ remaining complaint as to indirect infringement. Defendants argue that there was no evidence at trial to suggest that they encourage others to infringe the ’502 and ’386 Patents, which is required for a finding of inducement liability. On this point, neither side provides anything helpful – in fact, the briefing is so lacking that it borders on comical. Defendants simply say there was no evidence from Mr. Exley and Dr. Shamos agreed he could not testify on intent. . . . Plaintiffs wave their hands and explain that customer instruction “satisfies the knowledge element of inducement.” . . . First of all, Defendants are attacking the separate intent element of inducement here – not knowledge of infringement. . . . That is, Defendants are attempting to argue that Plaintiffs have failed to prove intent to encourage the infringing acts. . . .
Apart from that failure, Plaintiffs’ response is deficient on another level. Citing nothing, Plaintiffs assert that TeamViewer “instruct[s] customers on how to use a product in an infringing manner, which Beyschlag and Schanz confirmed.” . . . The Court is truly dumbfounded at Plaintiffs’ failure to cite any portion of the trial record – even the testimony of these witnesses they call out – to support this assertion (or inducement element).

Aqua Connect, Inc. v. Teamviewer US Inc., C.A. No. 18-1572-MN, at 24-25 (D. Del. Sept. 29, 2023).

The Court ultimately found enough support in the record—even if not called out in the briefing—to support post-suit inducement:

Nevertheless, given the TeamViewer customer instructions and guides in the record, the Court finds that the jury could reasonably find that Defendants encouraged its customers to perform the acts that constitute infringement. (See PTX469 (“How to Use TeamViewer” on TeamViewer’s website to assist customers); PTX472 (instruction manual on how to use accused software); see also Tr. at 295:13299:3 (Dr. Shamos’s testimony on induced infringement)). Specific intent can be proven through circumstantial evidence and it can reasonably be inferred from Defendants’ actions here. . . . Because substantial evidence supports the jury’s findings, the Court will deny Defendants’ motion as it relates to iOS direct infringement and post-suit indirect infringement.

Id. at 25.

Court Grants JMOL of No Pre-Suit Indirect Infringement

Another notable part of the decision addressed the knowledge requirement for pre-suit inducement. The Court reversed the jury and held that the evidence of pre-suit knowledge was insufficient as a matter of law:

[T]he question is whether the jury had substantial evidence to find that Defendants had pre-suit knowledge of the ’502 and ’386 Patents. Plaintiffs argue that the installation screen marked with the ’093 Patent in 2014-2015 is sufficient to provide Defendants with knowledge of the later but related ’502 and ’386 Patents, relying on SynQor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365 (Fed. Cir. 2013). The Court is unpersuaded. As an initial matter, SynQor involved very different facts. There, the evidence at trial showed that the patentee marked its bus converters and datasheets with its patents in an industry that was “extremely competitive” – so much so that it was common for the defendants to review each other’s products and datasheets. . . . Moreover, the jury heard evidence that “there was a significant effort” by the defendants to imitate the patentee’s products (which were marked) and, further, that the competitors in the industry would and did obtain each other’s products (including patentee’s marked products) and reverse-engineer them. Id. There was even further evidence – e.g., an employee downloading a copy of one of the patents, employee admitting to obtaining physical samples of marked product, employee emailing marked datasheet, etc. . . . Plaintiffs here did not come anywhere near the level of evidence provided in SynQor. There was no evidence that Defendants engaged in any competitive monitoring or that such activity was common in the industry. Indeed, all that the jury heard was that Defendants may have had knowledge of the ’093 Patent in the 2014-2015 timeframe and then, sometime later in 2017, Plaintiffs began marking their website and another product’s install screen with the ’502 and ’386 Patents. Without more, knowledge of the ’093 Patent is not sufficient to prove the requisite presuit knowledge of the ’502 and ’386 Patents. There simply was not substantial evidence to support a finding of pre-suit knowledge of the ’502 and ’386 Patents, and the verdict as to liability for induced and contributory infringement must be limited to October 2018 and later.

Id. at 23-24. It's interesting to see the standard on the other end of the case.

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