IP Law Daily, PATENT—N.D. Cal.: Infringement claims proceed against maker of image lenses used in Apple products, (Nov 5, 2013)

By Cheryl Beise, J.D.

Largan Precision Co, Ltd. (“Largan”) adequately pleaded claims of direct and indirect patent infringement against image lens maker Genius Electronic Optical Co., Ltd. (“Genius”), according to the federal district court in San Francisco (Largan Precision Co., Ltd. v. Genius Electrical Optical Co., Ltd., November 4, 2013, Orrick, W.). The court denied Genius’s motion for a more definite statement as to Largan’s direct infringement claims and its motion to dismiss Largan’s induced and contributory infringement claims.

On June 4, 2013, Largan Precision Co, Ltd. (“Largan”) sued Genius Electronic Optical Co., Ltd. (“Genius”), alleging that Genius’s imaging lenses, including lenses incorporated into Apple’s iPhone 5 and iPad mini, infringe the inventions claimed in one or more of five patents owned by Largan. As to direct infringement, Largan alleged that Genius infringed its patents through “the making, using, sale, offer for sell, or importation of its products, including without limitation an imaging lens used” in Apple’s iPhone 5 and iPad mini.

Largan also alleged that Genius “induced infringement by inducing others, including without limitation Apple, cellular service providers, distributors, and end users, to make, use, sell, offer for sale, or import the accused devices in the United States and this District” and that Genius “ provided marketing materials, technical specifications, or other materials that instruct and encourage the purchaser of an accused device to use the device in a manner that infringes certain claims” of its patents. Lastly, Largan alleged that Genius “contributed to the infringement of others, including without limitation Apple, cellular service provides, distributors, and end users, by offering to sell, selling, or importing within this District and the United States an imaging lens component constituting a material part of a patented optical system, knowing the same to be especially made or especially adapted for use in the infringement” of its patents, “and not a staple article of commerce suitable for substantial non-infringing use.”

More definite statement. Genius filed a motion for a more definite statement under Federal Rule of Civil Procedure 12(e) as to Largan’s direct infringement claims, arguing that Largan failed to specify which, if any, of Genius’s alleged activities took place in the United States.

Genius did not point out any deficiencies in Largan’s Complaint under Form 18, the court noted. Genius, instead, argued that Largan’s “bare bones pleadings” regarding what activities took place in the United States by Genius, a foreign corporation, provided it insufficient notice of what activity it is being accused of. However, Largan’s pleading followed Form 18 of the Federal Rules of Civil Procedure. The fact that Larson did not allege specific facts showing that each prong of conduct alleged —the making, using, selling, offering to sell and importation —occurred in the United States did not make the complaint is vague and ambiguous, according to the court. Largan’s complaint described Genius’s allegedly infringing activity with sufficient detail to permit Genius to answer or otherwise defend this case, the court found.

Indirect infringement claims. Genius also moved to dismiss under Federal Rule of Civil Procedure 12(b)(6) Largan’s indirect infringement claims for failure to allege adequate facts showing that Genius had knowledge of infringement and specific intent to induce others to infringe.

As to both claims, Genius argued that Largan did not adequately plead facts showing that Genius knew that its or Apple’s products were covered by and infringed Largan’s patents, or that Genius knew that the Apple products in which its lenses were allegedly incorporated were ever used, sold, offered for sale, or imported in the United States. The court disagreed. Largan placed Genius on notice of its infringement of the patents-in-suit by an April 2, 2013 letter, which included claim charts identifying each patent claim alleged to be infringed by Genius’s lenses in the Apple iPhone 5 and iPad Mini. The letter and claims charts were explicitly referenced in Largan’s complaint and, therefore, were incorporated by reference, according to the court. “When read in conjunction with the April 2, 2013 letter and claim charts, the facts in the Complaint reasonably support Largan’s contention that Genius knew that Apple was using the allegedly infringing apparatus,” the court said.

Genius also complained that Largan’s allegations were devoid of facts to support an inference that Genius had any knowledge that its imaging lenses were used, sold, offered for sale or imported into the United States. However, at this juncture and drawing all reasonable inferences in Largan’s favor, the court determined that Largan sufficiently alleged Genius’s knowledge that its products would be used in products sold by Apple in the United States.

Lastly, Genius contended that Largan failed to allege any acts by Genius that demonstrated its intent for Apple or others to infringe Largan’s patents. However, Largan was not required at the pleading stage to spell out at the exact details of the relationship between Genius and Apple to make the allegations regarding intent plausible, the court said. Largan’s allegations that two of Apple’s products contained the infringing lenses, that Genius was notified of the fact that the lenses infringed, and that Genius continued to sell the lenses was sufficient.

The case is No. 13-cv-02502-WHO.

Attorneys: John P. Schnurer (Perkins Coie LLP) for Largan Precision Co, LTD. Robert John Artuz (Kilpatrick Townsend & Stockton LLP) for Genius Electronic Optical Co., Ltd.

Companies: Largan Precision Co, Ltd; Genius Electronic Optical Co., Ltd.

Cases: Patent CaliforniaNews