IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

!CONTROL NETWORKS, INC.,

Plaintiff,

v.

ZONOFF INC.,

Defendant.

) ) ) ) ) ) ) ) ) )

ORDER

Civil Action No. 14-1199-GMS

WHEREAS, on September 16, 2014, the plaintiff Icontrol Networks, Inc. ("Icontrol")

filed this patent infringement action against the defendant Zonoff Inc. ("Zonoff') (D.I. 1);

WHEREAS, after Zonoff filed an initial motion to dismiss on November 7, 2014 (D.I.

11), Icontrol filed its First Amended Complaint on November 18, 2014 (D.I. 15);

WHEREAS, presently before the court is Zonoffs Motion to Dismiss the Amended

Complaint (D.I. 18);

WHEREAS, the court having considered the motion, the parties' positions as set forth in

their papers, as well as the applicable law;

· IT IS HEREBY ORDERED THAT:

Zonoffs Motion to Dismiss the Amended Complaint (D.I. 18) is DENIED. 1

1 Federal Rule of Civil Procedure 12(b)(6) provides for dismissal where the plaintiff "fail[s] to state a claim upon which relief can be granted." Fed. R. Civ. P. 12(b)(6). In considering a motion to dismiss, the court "accept[s] all factual allegations as true, construe[s] the complaint in the light most favorable to the plaintiff, and determine[s] whether, under any reasonable reading of the complaint, the plaintiff may be entitled to relief." Phillips v. Cnty. of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008). "Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements,'' are inadequate to state a claim. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

"Whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 27l(b). A claim for induced infringement must allege facts tending to show that the defendant "specifically intended" its customers to infringe the patents-in-suit, and knew that the customers' acts constituted infringement. See In re Bill

of Lading Transmission & Processing Sys. Patent Litig., 681F.3d1323, 1339 (Fed. Cir. 2012); see also DSU Med. Cmp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) ("[I]nducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement."). The court finds that !control goes beyond mere legal conclusions and makes sufficient factual allegations to state a claim. The Amended Complaint alleges facts supporting a plausible inference that Zonoffhad knowledge of the patents-in-suit. (D.I. 15, iii! 13-21) The Amended Complaint also alleges that Zonofftook various actions supporting the plausible inference that it intended its customers to infringe the patents-in-suit: "advertising the infringing products and their infringing use; establishing distribution channels ... ; drafting, distributing or making available datasheets, instructions, or manuals for the Accused Products to Zonoff's customers and prospective customers; and/or providing technical support or other services for the Accused Products to Zonoff' s customers and prospective customers." (Id. iii! 26, 34, 42, 50, 58, 66.) !control need not "prove its case at the pleading stage." See In re Bill of Lading, 681 F.3d at 1339. Taking into consideration the technology disclosed in the patents-in-suit and the industry in which the parties sell their products, the court finds !control's claim for induced infringement "reasonable and plausible." See id. at 1340.

Claims for contributory infringement require similar allegations of knowledge and intent, but additionally require the plaintiff to "plead facts that allow an inference that the components sold or offered for sale have no substantial non-infringing uses." Id. at 1337. !control alleges that Zonoff's accused components can only be used "in conjunction with or as part of the claimed apparatuses and methods." (D.I. 15, iii! 28, 36, 44, 52, 50, 68.) In the court's view, the Amended Complaint adequately pleads facts supporting an inference of contributory infringement. !control does not allege that, if the Zonoff products are used in a certain way, they must infringe; rather, !control alleges that Zonoff's software must infringe no matter how it is used-"the Accused Products and related components have no use apart from making and/or using the inventions as claimed in the [asserted patents]." (Id.); see In re Bill of Lading, 681 F.3d at 1338. Zonoff contends that !control's allegations are merely legal conclusions, but the court disagrees. While perhaps in other contexts it would be necessary, here the court will not require !control to engage in a fruitless exercise of detailing why the implementation of Zonoff's software necessarily results in infringement. See Iqbal, 556 U.S. at 679 ("Determining whether a complaint states a plausible claim for relief will ... be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.").

Zonoff also argues that all claims for infringement of method claims should be dismissed because the Amended Complaint fails to adequately allege joint infringement. But the Amended Complaint does not "clearly assert[] a joint infringement theory." See Bonutti Skeletal Innovations LLC v. Conformis, Inc., No. 12-1109-GMS, 2013 WL 6040377, at 2 n.4 (D. Del. Nov. 14, 2013). Zonofftakes as given that the method claims of the patents-in­suit necessarily implicate joint infringement. This conclusion may ultimately prove correct, but the claims at issue are not so clear that the court is able to make such a determination without more information. See id. ("Bonutti must assert joint infringement because the '896 patent is for 'an improved method of performing surgery on a joint in a patient's body, such as a knee.' There is no indication that ConforMIS performs surgery on patients."). Zonoff argues that "!control makes no attempt to show why claim construction is necessary to determine whether joint infringement is implicated." (D.I. 24 at 4 n.3.) !control is not obligated to make such a showing. In the court's view, Zonoffasks too much oflcontrol at the pleading stage. See Phillips, 515 F.3d at 233.

Finally, Zonoff argues that !control's claim for damages should be dismissed because the Amended Complaint does not allege that !control's products complied with the "marking" statute, 35 U.S.C. § 287. The court rejects Zonoff' s position. At the very least, Zonoff had actual notice of infringement as of September 16, 2014, the date of filing of the original complaint. Thus, as Zonoff appears to acknowledge in its reply brief, only pre-suit damages (and not all damages) are perhaps barred. Moreover, !control points out that the notice requirements imposed by § 287 do not apply to all patented inventions. See Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009) ("The law is clear that the notice provisions of§ 287 do not apply where the patent is directed to a process or method."). The court therefore sees no reason to dismiss claims for pre-suit damages at this stage when the extent oflcontrol's overall damages will be assessed in any event at a later time.

2