Berall v. Verathon Inc.

Background

Dr. Berall owns U.S. Patent No. 5,827,178, which covers a laryngoscope with a camera positioned near the blade’s far end to provide a view of a patient’s trachea. He alleged that the AWS-S100 and AWS-S200 video laryngoscopes embodied claims of that patent. The amended complaint asserted direct, induced, contributory, and willful-infringement claims against Pentax of America, Inc., Hoya Corp., and Hoya Digital Solutions Corp. Teleflex Medical, Inc., did not join the motion.

The defendants moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c). The court applied the same standard used for a motion to dismiss for failure to state a claim: accepting the complaint’s factual allegations as true and asking whether they plausibly stated claims for relief.

Direct infringement

The defendants argued that the amended complaint did not allege that the cameras in the AWS laryngoscopes were “mounted on” the blade as required by the patent claims. The court rejected that argument, concluding that the complaint’s allegations, patent exhibits, product photographs, descriptions of the camera’s location, and third-party articles gave the defendants fair notice of the direct-infringement claims. Whether differences in the camera-mounting mechanism meant that the products actually infringed was a claim-construction issue that could not be resolved on this pleadings-based motion.

The court reached a different conclusion regarding Hoya’s direct-infringement liability. The complaint alleged that Hoya manufactured the laryngoscopes and caused them to be imported into, sold in, or offered for sale in the United States through Pentax and Hoya Digital. But it did not allege that Hoya manufactured the products in the United States, and it did not plead facts establishing an agency relationship or joint enterprise between Hoya and its subsidiaries. The court therefore dismissed the direct-infringement claim against Hoya. The court did not dismiss the direct-infringement claims against Pentax or Hoya Digital in this ruling.

Indirect infringement

The court allowed the induced-infringement claims to proceed. It found that the amended complaint plausibly alleged that the defendants knew about the patent and the alleged infringement and specifically intended downstream actors to infringe. The allegations included materials encouraging customers to use the AWS laryngoscopes for intubations, distributor sales activity, and Hoya’s alleged direction that Pentax and Hoya Digital sell, offer for sale, or import the products.

The court dismissed the contributory-infringement claims against Hoya, Hoya Digital, and Pentax. Contributory infringement requires, among other things, a material component especially made for an infringing use and lacking substantial noninfringing uses. The complaint alleged that the defendants sold the entire AWS laryngoscope, not a component of another patented invention. Although the complaint referred to disposable PBlades as components, it did not allege that the defendants sold PBlades individually in the United States.

Willful infringement and disposition

The court allowed the willful-infringement claims to proceed at the pleading stage. It held that the complaint plausibly alleged deliberate or intentional infringement after the defendants learned of the patent and the alleged infringement. The court did not decide whether Dr. Berall would ultimately be entitled to enhanced damages.

Judge Preska granted in part and denied in part the defendants’ motion for judgment on the pleadings. The court dismissed (1) the direct-infringement claim against Hoya and (2) the contributory-infringement claims against Hoya, Hoya Digital, and Pentax. The order allowed Dr. Berall to file an amended complaint no later than September 24, 2021, and directed the clerk to close the motion.