A district court recently dismissed a complaint for failing to properly allege direct infringement with the mobile device recited in the patent claims. Garrett v. TP-Link Research America (N.D. Cal.). An app for installation on a mobile device does not count as a mobile device or as using a mobile device for showing direct infringement, and when pleading indirect infringement, direct infringement by an end user must be alleged. Garrett’s complaint against TP-Link failed on these scores, so the court granted TP-Link’s motion to dismiss the complaint, without prejudice.
Garrett, an individual, sued TP-Link over its line of a security cameras for infringement of U.S. Patent Nos. 9,854,207 and 10,511,809. All the claims of the patents require a “mobile device” and a “camera,” and some of the claims further require a “server.” The court used claim 19 of the ’207 patent and claim 10 of the ’809 patent as representative:
19. A mobile surveillance system, comprising:
a mobile device configured to communicate with at least one camera positioned at a surveillance area, wherein the at least one camera captures surveillance data of the surveillance area; and
the mobile device is configured to control activation of the mobile surveillance system, and control start and stop of the capture of the surveillance data, and transfer of the surveillance data, wherein, the surveillance data is wirelessly communicated directly from a transmitter linked to the camera to the mobile device; and
the mobile device is further configured to activate upon detection of motion at the surveillance area,
wherein the detection of motion detects variations in motion measurements at the surveillance area; and
wherein the mobile device activates when the motion measurements exceeds a determined threshold.
10. A method for conducting surveillance, comprising:
receiving an instruction from a mobile device to control start and stop of capture of surveillance data at a surveillance area;
capturing the surveillance data by a camera at the surveillance area, wherein the camera is operably engaged to a motion detection mechanism for detecting variations in motion measurements at the surveillance area; and
transferring said surveillance data to the mobile device when the motion detection mechanism obtains a motion detection measurement that exceeds a predetermined threshold indicating the surveillance area is unsecure,
wherein the mobile device displays a datebook comprising days of the week and times of day that can be synchronized with an application of the user device to schedule the transferring of surveillance data.
TP-Link offers a downloadable app for use with its security cameras. Garrett’s complaint alleged direct infringement, contributory infringement, and inducement based on the cameras and app. TP-Link moved to dismiss Garrett’s complaint, stating in its briefing that it did not sell mobile devices. The court did not credit that statement because it was outside the pleadings, but the court did note that the complaint failed to allege that TP-Link offered mobile devices.
The court granted the dismissal of the direct infringement claims because the app does not satisfy the claim elements requiring a mobile device. Under § 271(a), “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States … infringes the patent.” According to the court, to “make” or “sell” the claimed system, TP-Link would have had to make or sell a mobile device. The app didn’t cut it: “An application to be installed on a mobile device is not the same thing as the ‘mobile device’ itself.” To “use” the claimed system, TP-Link would have had to use it in the manner of the end user. “Garrett alleges in the Complaint that the infringing products can be used in an infringing manner but does not allege that TPRA has ever ‘used’ a ‘mobile device’ or assembled the system with a ‘mobile device’ in an infringing manner.” Similarly, to infringe the claimed method, TP-Link would have had to use a mobile device in the same manner as the end user. “Because methods cannot be sold in the same way as devices, the sale of a product for performing a claimed method does not constitute direct infringement.”
Situations like this—in which the end user is the more natural accused infringer than the manufacturer—are what indirect infringement is intended to address. The first type of indirect infringement, contributory infringement, requires “(1) that there is direct infringement, (2) that the accused infringer had knowledge of the patent, (3) that the component has no substantial noninfringing uses, and (4) that the component is a material part of the invention.” The second type, inducement, requires “first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.”
Both types require direct infringement by someone, in this case, the end user. This prong is where Garrett stumbled. According to the court, the allegations in Garrett’s complaint and the copious advertising materials attached to the complaint only showed that the mobile devices with the app installed had the capability to be used in an infringing manner, not that anyone actually used them that way.
Garrett fared better on the knowledge prongs for contributory infringement and inducement. Garrett alleged knowledge “[b]y no later than the time of the filing of this action.” This statement suffices, at least for the Northern District of California. The downside of relying on the complaint for the knowledge prongs is that indirect infringement “will be limited to post-filing conduct.”
The dismissal was without prejudice, so Garrett has a chance to add to his allegations.
Lessons for Practice
This case presents a classic “divided infringement” scenario: the claims require actions by multiple parties, here a manufacturer and an end user, to be infringed. As much as possible, claims should be drafted to avoid divided infringement, in other words, so that only one entity holds all the claimed components or performs all the claimed actions. This is not always possible, and it may not have been possible for the patents in this case, but a claim drafter should always think about how to avoid divided infringement. Claims should be drafted with the potential infringer in mind, including what that entity has control over—in this case, security cameras and sending an app—and what it doesn’t—mobile devices and using the app.