Fortinet, Inc. v. Forescout Technologies, Inc.

Background

Fortinet alleged that Forescout infringed five patents concerning cybersecurity and network access control. Fortinet asserted claims for induced infringement, contributory infringement, and willful infringement. Forescout moved to dismiss the amended complaint under Federal Rule of Civil Procedure 12(b)(6), arguing that the patents added in the amended complaint—the ’034 and ’421 Patents—claimed ineligible subject matter under 35 U.S.C. § 101 and that Fortinet had not adequately pleaded the three infringement theories.

In an earlier order, the court had declined to invalidate three other asserted patents under § 101. It had also allowed Fortinet’s induced-infringement claim to proceed but dismissed its contributory- and willful-infringement claims as inadequately pleaded, while allowing Fortinet to amend.

Patent Eligibility

Forescout argued that the ’034 Patent was directed to the abstract idea of selecting a course of action based on a condition and launching predetermined functions. The ’421 Patent, Forescout argued, merely automated the abstract process of organizing tasks and collecting information about them. Fortinet responded that both patents addressed specific technological problems in network and endpoint security and described technological improvements.

The court applied the two-part test from Alice Corp. v. CLS Bank International. First, the court asks whether patent claims are directed to an abstract idea or another excluded category. If so, it asks whether the claims contain an “inventive concept”—an element or combination of elements that goes beyond well-understood, routine, and conventional activity.

The court acknowledged that the independent claims of both patents appeared abstract when read on their face. But it also found that dependent claims and the patent specifications described specific technological features and potential improvements. At the motion-to-dismiss stage, the court was unwilling to resolve disputed questions about whether those features were conventional or whether the patents provided concrete technological solutions. The court therefore denied Forescout’s motion to dismiss the ’034 and ’421 Patents on § 101 grounds. The court noted that Forescout could raise the eligibility arguments again later in the litigation, including at summary judgment.

Induced Infringement

Induced infringement requires allegations that the defendant knew of the patent, knew that the induced acts constituted infringement, and intended to encourage those acts. Fortinet identified particular Forescout instructional materials, provided links to them, alleged that Forescout knew of the patents, and alleged that the materials instructed customers to use accused products in an infringing manner.

The court held that these allegations plausibly stated induced-infringement claims. It concluded that the amended complaint gave Forescout adequate notice of the claims and the instructional materials Fortinet would rely on. The court denied Forescout’s motion with respect to induced infringement.

Contributory Infringement

Contributory infringement requires allegations that the defendant sold or offered a component especially made or adapted for infringing use, knowing of that use, and that the component was not a staple product suitable for substantial noninfringing use.

Although Fortinet repeated much of its earlier statutory language, it added allegations identifying software components in each accused product and stating that those components were programmed for infringing use and had no substantial noninfringing use. The court found these allegations sufficient to support a plausible inference that the components were especially made or adapted for infringement and lacked substantial noninfringing uses. It therefore denied Forescout’s motion with respect to contributory infringement.

Willful Infringement

Willful infringement can support increased damages, but the court explained that enhanced damages generally require egregious conduct, such as willful, wanton, malicious, bad-faith, deliberate, or consciously wrongful conduct. Fortinet alleged that it tried to start licensing discussions, continued contacting Forescout, and that Forescout delayed or refused to engage in discussions while continuing to sell the accused products.

The court found those allegations insufficient. It characterized the allegations as describing a routine patent dispute rather than egregious infringement. The court also found that they did not plausibly show willful blindness, which requires a subjective belief that there was a high probability of infringement and deliberate action to avoid confirming it. The court granted Forescout’s motion to dismiss the willful-infringement claims and denied Fortinet further leave to amend because Fortinet had already been allowed to amend and had not added new factual allegations.

Disposition

The court denied Forescout’s motion to dismiss the ’034 and ’421 Patents as claiming ineligible subject matter. It denied the motion as to Fortinet’s induced- and contributory-infringement claims. It granted the motion as to Fortinet’s willful-infringement claims without further leave to amend. The order disposed of Docket No. 71.