IP Law Daily, PATENT—W.D. Wash.: Direct and induced infringement claims of the ’244 patent to proceed, contributory infringement claim dismissed, (Dec 13, 2023)

By Saurabh Kashyap, B.A., LL.B.

The court ruled that the direct and induced infringement claims met the required pleading standards, but the contributory infringement claim lacked factual support.

Ruling on the defendant's motion to dismiss a patent infringement lawsuit concerning U.S. Patent No. 8,317,244 (the ’244 patent), a federal district court in Washington allowed claims for direct and induced infringement to proceed, finding that the plaintiff Jay Schuyleman’s allegations met the Federal Circuit's pleading standards. In contrast, the court dismissed Schuyleman's contributory infringement claim without prejudice, citing his failure to adequately address the critical elements of materiality, non-infringing use, and knowledge elements of a contributory infringement claim. However, the court granted Schuyleman leave to amend his contributory infringement claim, citing the absence of bad faith, undue delay, or prejudice (Schuyleman v. Barnhart Crane and Rigging Co., December 8, 2023, Robart, J.).

Background. Jay Schuyleman, a former ironworker with extensive experience in the construction of large commercial and governmental buildings, observed significant challenges and hazards associated with inserting large materials into high-rise buildings using hanging platforms or fixed beams. In response to these challenges, he developed a novel method in 2008 that combined a movable boom with counterweights, greatly simplifying the process of hoisting heavy loads to desired heights. Schuyleman obtained registration of the ’244 patent titled "Apparatus and Method for Positioning an Object in a Building" for this design and claimed it as an improvement in construction lifting apparatuses. The patent included one independent claim and 16 dependent claims, emphasizing an offset hoisting apparatus with a rigid, slidable boom.

Schuyleman accused Barnhart Crane and Rigging Co. (Barnhart), a company with several rental locations and an informative website, of infringing on his patent. He claimed that Barnhart's equipment, which included several movable boom systems, infringed on his patent by incorporating a sliding boom similar to his invention. Schuyleman claimed that despite notifying Barnhart of the infringement in December 2022, the company had not adequately responded and continued to infringe on his patent.

Thus, Schuyleman initiated a patent infringement lawsuit on April 11, 2023. Subsequently, on May 24, Barnhart sought dismissal of the complaint, alleging it failed to state a claim. However, Schuyleman countered by filing an amended complaint on June 10, 2023, under Federal Rule of Civil Procedure 15(a)(1)(B), leading the court to declare Barnhart's initial dismissal motion moot. Barnhart's subsequent motion to dismiss the amended complaint was filed on June 26, which the court granted on August 23, 2023. The court's decision hinged on the insufficiency of Schuyleman's allegations regarding direct and induced infringement of the '244 patent, citing a lack of plausibility in his claims. The court emphasized the necessity for factual allegations that plausibly suggest product infringement. Schuyleman's failure to provide such allegations resulted in his direct and induced infringement claims being dismissed.

However, Schuyleman filed a second amended complaint on September 5, 2023, reasserting his previous claims and introducing a new claim for contributory infringement. Barnhart responded with a third motion to dismiss on September 19, 2023.

Direct infringement. Barnhart argued that Schuyleman's complaint should be dismissed because it relied on conclusory allegations and implausible claim construction theories. However, the court determined that Schuyleman's second amended complaint met the Federal Circuit's pleading standards. Specifically, Schuyleman claimed that Barnhart violated the '244 patent by making, using, and selling patented products without authorization. The court stressed that a plaintiff is not required to plead infringement element by element and that general allegations of infringement supported by factual content are sufficient at the pleading stage. The court determined that Schuyleman's allegations, supported by detailed claim charts and evidence, were adequate to provide Barnhart with fair notice of the alleged infringement. As a result, the court rejected Barnhart's arguments about the omission of several claim elements, implausible claim limitation construction, and alleged inconsistencies with direct infringement, allowing Schuyleman's claim to proceed.

Induced infringement. The court determined that Schuyleman had established sufficient direct infringement of the '244 patent by Barnhart's Accused Products. Furthermore, the court found that Schuyleman met the knowledge requirement, demonstrating that Barnhart had been either aware of or willfully blind to the infringement since December 9, 2022, when Schuyleman notified them.

Notably, the court acknowledged that Barnhart's website, which provided information and videos on using the Accused Products, constituted active steps taken to encourage direct infringement. The court was able to discern Barnhart's intent to induce infringement due to the inclusion of screenshots, quotes, and links to Barnhart's website and videos in Schuyleman’s complaint, resulting in the denial of Barnhart's motion to dismiss the claim.

Contributory infringement. Barnhart contended that Schuyleman's claim of contributory infringement lacked sufficient factual support. The court observed that contributory infringement is the sale or offer of material or apparatus specifically adapted for infringing a patent, with no significant non-infringing uses, and with the seller's knowledge of its intended infringing use.

Schuyleman had accused Barnhart of facilitating third-party infringements by marketing and importing products allegedly designed to violate the '244 patent. The court, however, determined that Mr. Schuyleman's allegations in his second amended complaint did not adequately address the critical elements of materiality, non-infringing use, and knowledge required for a contributory infringement claim.

The court stated that concrete facts did not support Mr. Schuyleman's assertions about the accused products' material role in practicing the patent and lack of non-infringing use. Despite correspondence indicating Barnhart's awareness of potential infringement by December 2022, the court concluded that there was insufficient evidence that Barnhart knowingly sold infringement-related products. As a result, the court granted Barnhart's motion to dismiss the contributory infringement claim.

Leave to amend. Schuyleman argued that the court should allow him to amend any claims it may dismiss. The court observed that it retains the discretion to refuse amendments based on factors such as bad faith, undue delay, prejudice to the opposing party, the futility of the amendment, and the history of previous amendments. Even though Schuyleman had already amended his complaint twice, the court granted him leave to amend his contributory infringement claim, citing the absence of evidence indicating bad faith, undue delay, or prejudice, along with the court's belief that amending the claim would not be futile.

The court, therefore, granted in part and denied in part Barnhart’s motion to dismiss.

The case is No. C23-0562JLR.

Attorneys: Peter Y. Zhu (Desmarais LLP) for Jay Schuyleman. Emily Billig (Baker Donelson Bearman Caldwell & Berkowitz PC) for Barnhart Crane and Rigging Co.

Companies: Barnhart Crane and Rigging Co.

Cases: Patent WashingtonNews