Where an accused infringer does not perform all the steps in a method patent claim or does not sell all the components requried in a product patent claim, the patent owner is often forced to accuse the infringer with indirect infringement instead of direct infringement. See, 35 U.S.C. § 271(b) and (c). While the local patent rules are often clear that a patent owner’s infringement contentions must identify the products that directly infringe by “name or model number” when the theory is one of direct infringement, it is less clear whether the contentions must identify which products directly infringe by “name or model number” when the theory against the accused infringer is one of indirect infringement.
In Fujitsu Ltd. v. Belkin Intl. et al. (.pdf), Case No. 5:10-cv-3972, pp. 11-14 (N.D. Cal. Sept.28, 2012), the Court ruled that the patent owner’s indirect infringement contentions must identify those third-party computer cards by name that were directly infringing even though the theory of liability was one of indirect infringement. In its reasoning, the Court noted that Patent Local Rule 3-1 of the Northern District of California requires that within 14 days after the initial case management conference, the patentee must serve on each opposing party a “Disclosure of Asserted Claims and Infringement Contentions,” identifying “[s]eparately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware.” Patent L.R. 3-1(b). The identification of Accused Instrumentalities must be “as specific as possible,” and should include the “name or model number, if known.” Id. For claims of indirect infringement, the Infringement Contentions must include “an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described.” Patent L.R. 3-1(d).
Fujitsu argued to the Court that its indirect infringement contentions were sufficient even though they did not identify by name certain third-party computer cards that were alleged to be directly infringing. Although Local Patent Rule 3-1(d) does not expressly state that the patent owner must identify the directly infringing third-party product by name, Judge Koh ruled that such an identification is required. In essence, Judge Kohn incorporated the contention requirements for direct infringement by specific product name into the requirements for indirect infringement contentions. As a result, the patent owner was not allowed to advance its indirect infringement arguments that relied upon the direct infringement of certain previously unidentified computer cards alleged to be directly infringing.
Key Takeaway: When preparing infringement contentions that rely upon a theory of indirect infringement, closely examine the local patent rules and corresponding case law to determine what other details concerning the underlying direct infringement should also be disclosed.