Giving App Away for Free May Constitute Infringing Sale

The court denied without prejudice defendants' motion for summary judgment of no contributory infringement of plaintiff's mobile device application patents. "[Defendant] moved for entry of judgment as a matter of law . . . on the ground that it 'provides its mobile applications as well as access to its mobile website free of charge' making it impossible for [it] to violate 35 U.S.C. § 271(c). . . . Because there are currently material facts in dispute on this key question of whether or not [defendant] receives consideration from its customers in exchange for the Apps and website, the motion must be denied. . . . [Plaintiff] cites to various exhibits that purportedly demonstrate that [defendant] provides the Apps to its customers in exchange for consideration, such as fees and access to deposited funds, and requirements that customers have accounts and enter into contracts. . . . [T]he fact that [defendant] might, in some situations, give the Apps away for free does not mean that [it] cannot, in other situations, be selling the Apps within the meaning of § 271(c). These are all legal issues that require the benefit of full discovery and thorough briefing based on a universe of known facts."

Maxim Integrated Products, Inc., Patent Litigation, 2-12-mc-00244 (PAWD October 25, 2013, Order) (Conti, J.)