Thursday, February 25, 2010

"Offer to Sell Liability Does Not Apply to Claims of Infringement of a Method Patent"

Plaintiff failed to state a claim of indirect infringement of the asserted method claim because the complaint lacked any allegation of underlying direct infringement by a third party and defendants' "market[ing] their products with the intent that they be used to infringe" did not constitute an "offer to sell." "The Federal Circuit has on two occasions specifically declined to address whether a method patent . . . can be infringed pursuant to the 'offer to sell' clause . . . . [A]lthough there are apparently divergent views on this issue among the district courts, this Court is persuaded that 'offer to sell' liability does not apply to claims of infringement of a method patent. The Court concludes that in this case, in order to state claims for indirect infringement, [plaintiff's] complaints must plead specific facts plausibly establishing that direct infringement of the [patent-in-suit] has occurred, i.e., that a third party has actually performed each step of the patented method."

In re: Bill of Lading Transmission and Processing System Patent Litigation, 1-09-md-02050 (OHSD February 23, 2010, Order) (Beckwith, S.J.)

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