United States District Court, W.D. Virginia, Charlottesville Division
GLEN E. CONRAD, CHIEF UNITED STATES DISTRICT JUDGE
Wearable Technologies Inc. ("Smart Wearable") filed
this action against Fitbit, Inc. ("Fitbit") for
alleged infringement of U.S. Patent No. 6, 997, 882 Bl
("the '882 Patent"). Smart Wearable asserts
claims of direct and indirect infringement. Fitbit has moved
to dismiss the claims of indirect infringement under Rule
12(b)(6) of the Federal Rules of Civil Procedure. The court
held a hearing on the motion on March 22, 2017. For the
reasons set forth below, the motion to dismiss will be
granted in part and denied in part.
Wearable is a Delaware corporation based in Virginia. It is
the owner of the '882 Patent, titled "6-DOF Subject
Monitoring Device and Method, " which was issued by the
United States Patent and Trademark Office on February 14,
2006. The patent "relates to systems and methods of
monitoring a subject using acquired six degree-of-freedom
("6-DOF") data regarding the subject as well as
acquired physiological data of the subject." Compl.
¶ 6, Docket No. 1. "Specifically, certain claims of
the '882 Patent disclose the use of an acceleration
module to obtain 6-DOF data descriptive of the movement of a
subject." Id. "The 6-DOF data is
synchronized with obtained physiological data, such as the
sensed, detected, or measured heart rate of the subject,
" and "[t]he synchronized 6-DOF and physiological
data is then displayed." Id.
is a Delaware corporation based in California. Smart Wearable
claims that Fitbit has infringed the '882 Patent by
making and selling certain fitness tracker products (referred
to collectively as "the Accused Products"), which
"monitor a subject using acquired 6-DOF data regarding
the subject as well as acquired physiological data of the
subject." Id. at ¶ 12. In particular,
Smart Wearable alleges that "the Accused Products in the
past directly infringed and continue to directly infringe at
least claim 8 of the '882 Patent." Id. at
addition to alleging direct infringement by Fitbit, Smart
Wearable claims that Fitbit has engaged in indirect
infringement, both by inducing customers and/or end users to
infringe the '882 Patent, and by contributing to the
infringement of the patent by customers and/or end users. To
support the claims of indirect infringement, Smart Wearable
alleges that "Fitbit has had knowledge of, or was
willfully blind to, the existence of the '882 Patent
since the filing of this Complaint, if not earlier."
Id. at ¶ 9. Smart Wearable alleges that end
users of the Accused Products directly infringe claim 8
"when using the products to, at least, monitor their
heart rate, active minutes, calories burned, heart rate zone
training, and/or sleep tracking." Id. at ¶
14. Smart Wearable asserts that Fitbit possessed a specific
intent to induce such infringement by, at a minimum,
providing user guides, sales-related materials, and product
instruction materials that "instruct its customers and
end users on the normal operation of at least the Accused
Products including heart rate, active minutes, calories
burned, heart rate zone training, and/or sleep tracking
features that infringe the '882 Patent."
Id. at ¶ 15. Smart Wearable further asserts,
upon information and belief, that "the heart rate,
active minutes, calories burned, heart rate zone training,
and/or sleep tracking features of the Accused Products have
no substantial non- infringing uses, and Fitbit knows that
these features are especially made or especially adapted for
use in a product that infringes the '882 Patent."
Id. at ¶ 17.
has moved to dismiss the claims of indirect infringement
pursuant to Rule 12(b)(6) of the Federal Rules of Civil
Procedure. "The purpose of a Rule 12(b)(6) motion is to
test the sufficiency of a complaint." Edwards v.
City of Goldsboro, 178 F.3d 231, 243 (4th Cir. 1999).
Accordingly, the court's "evaluation is thus
generally limited to a review of the allegations of the
complaint itself." Goines v. Valley Cmty. Servs.
Bd., 822 F.3d 159, 165-66 (4th Cir. 2016). "While a
complaint attacked by a Rule 12(b)(6) motion does not need
detailed factual allegations, a plaintiffs obligation to
provide the grounds of [its] entitlement to relief requires
more than labels and conclusions, and a formulaic recitation
of the elements of a cause of action will not do."
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)
(citation and internal quotation marks omitted). To survive
dismissal for failure to state a claim, "a complaint
must contain sufficient factual matter, accepted as true, to
'state a claim for relief that is plausible on its face,
'" meaning that it must "plead factual
content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (quoting Twombly, 550 U.S. at 570).
Patent Act provides that "whoever without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States or imports into the United States
any patented invention during the term of the patent
therefor, infringes the patent." 35 U.S.C. §
271(a). The statute also prohibits a person from indirectly
infringing a patent. See 35 U.S.C. §
271(b)-(c). The two types of indirect infringement are
induced infringement under § 271(b) and contributory
infringement under § 271(c).
271(b) provides that "[w]hoever actively induces
infringement of a patent shall be liable as an
infringer." 35 U.S.C. § 271(b). "Inducement
requires a showing that the alleged inducer knew of the
patent, knowingly induced the infringing acts, and possessed
a specific intent to encourage another's infringement of
the patent." Vita-Mix Corp. v. Basic Holding,
Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009).
Additionally, a plaintiff must plead facts showing direct
infringement by someone other than the defendant. Nielson
Co. (US), LLC v. comScore, Inc., 819 F.Supp.2d 589, 593
(E.D. Va. 2011).
moving to dismiss the claim of induced infringement, Fitbit
contends that the plaintiff has not adequately alleged (1)
that Fitbit had knowledge of the '882 Patent, or (2) that
it specifically intended to encourage others to infringe the
patent. The court will address each argument in turn.
Knowledge of ...