In a recent order, Chief Judge Gregory M. Sleet denied defendant’s motion to dismiss plaintiff’s claims of direct, contributory, and induced infringement for failure to state a claim upon which relief may be granted. Segan LLC v. Zynga Inc., C.A. No. 11-670-GMS (D. Del. May 2, 2013). Plaintiff is asserting U.S. Patent No. 7,054,928 (the “’928 Patent”), which includes two independent claims, one system claim and one method claim. Id. at 1 n.1. With respect to plaintiff’s claims for direct infringement, defendant argued that “it cannot possibly directly infringe either the system or methods claims” because direct infringement requires a party to “commit all the acts necessary to infringe . . . either personally or vicariously,” and plaintiff’s asserted claims “require activity by multiple actors.” Id. Judge Sleet explained, however, that with respect to the “use” of a system, “physical or direct control of all the elements of a system is not required—the user must simply cause those elements to work for their patented purpose.” Id. at 2 n.1. In light of that standard, Judge Sleet found that plaintiff sufficiently pled direct infringement, as plaintiff alleged that defendant “has used its own games on social media websites.” Id.
Defendant also argued that plaintiff’s indirect infringement claims should be dismissed for failure to adequately plead “the requisite underlying direct infringement [and] the necessary knowledge and intent.” Id. Judge Sleet found, however, that plaintiff sufficiently pled the direct infringement prong by alleging that “on any given day 60,000,000 people (i.e., users) play Defendant’s games on social websites” and that the “games’ users . . . put the invention into service, control the operation of the system as a whole and obtain [a] benefit from it.” Id. Further, with respect to the knowledge and intent requirements for induced infringement, Judge Sleet contrasted the instant complaint from the deficient complaint in Chalumeau Power Sys. LLC v. Alcatel-Lucent, C.A. No. 11-1175-RGA (D. Del. Jul. 18, 2012) (discussed previously here). Id. at 3 n.1. In the Chalumeau complaint, there were “only insufficient factual assertions to support the legal conclusion of actual knowledge, and no factual assertions at all to support the legal conclusion of specific intent.” Id. In the instant matter, Judge Sleet found that knowledge was sufficiently pled since plaintiff alleged that it sent a letter to defendant’s officers with a full copy of the asserted patent on June 30, 2011. Id. Further, Judge Sleet found that plaintiff provided “several factual assertions permitting a reasonable inference that [defendant] acted with the requisite specific intent.” Id. With respect to the contributory infringement claim, Judge Sleet again found knowledge sufficiently pled based on the allegations related to plaintiff’s letter with the asserted patent attached. Id. Further, Judge Sleet found that plaintiff provided allegations sufficient to permit “the reasonable inference that [defendant] was aware that its games were ‘especially adapted for use in infringement’ of the ’928 Patent.” Id. Specifically, plaintiffs alleged that “[d]efendant has specifically designed, developed, and acquired [its] on-line games for game players to use on target websites” and that defendant “admits in its amended IPO statement that its games require game players (users) to access the internet, Facebook (or any target website [defendant] engages).” Id.
Segan LLC v. Zynga Inc., C.A. No. 11-670-GMS (D. Del. May 2, 2013)
Delaware IP Law Blog 