Patent infringement claims against
Maxell Inc.'s complaint sufficiently alleges that Apple knew of the alleged infringement before the suit was filed, and that Apple induced its users to infringe the patents, the court said Oct 23.
Maxell’s suit against Apple alleges direct, induced, willful and contributory infringement of 10 patents related to mobile device navigation technology.
Apple moved to dismiss some of Maxell’s claims, arguing that it didn’t intend to induce others to infringe, and that Maxwell’s pre-suit indirect and willful infringement claims should fail because Apple didn’t know of the alleged infringement before the suit.
Apple must defend the induced infringement claims. Maxwell’s complaint includes screenshots and descriptions of Apple user manuals and ads that contain “descriptions and demonstrations” of the allegedly infringing functions.
“Advertising the benefits of the accused functionalities gives rise to a reasonable inference that Apple intended to induce its customers to infringe the patent,” the court said. That, together with allegations that Apple’s customers directly infringe by using the iPhone in accordance with Apple’s instructions, is “more than enough” to sustain Maxwell’s induced infringement claims, the court said.
Apple’s argument that it wasn’t on notice of the alleged infringement also failed. The complaint’s assertions that Maxell shared information about the patented technology with Apple including “detailed explanations regarding Maxell’s patents and allegations” is enough to support its pre-suit infringement claims.
Apple also beat Maxwell’s pre-suit claims as to one of the patents because Apple only knew of the application for the patent when the complaint was filed. “Knowledge of a patent application alone is insufficient to demonstrate knowledge of the later issued patent,” the court said.
Judge Robert W. Schroeder III wrote the order.
Mayer Brown LLP and Patton Tidwell & Culbertson LLP represent Maxell. O’Melveny & Myers lLP and Gillam & Smith LLP represent Apple.
The case is Maxell Ltd. v. Apple Inc., E.D. Tex., No. 5:19-cv-00036, 10/23/19.