Joao Control & Monitoring Sys., LLC v. Slomin's, Inc.

Opinion (Gleeson): Plaintiff Joao Control & Monitoring Systems, LLC ("JCMS") creates monitoring apparatuses. Defendant Slomin's, Inc. ("Slomin's") develops home security systems. JCMS alleged that Slomin’s infringed upon five of its patents. Slomin’s motioned to dismiss these allegations on the basis that JCMS failed to properly state a claim. The requirements for how to state a direct infringement claim are specified in “Form 18 of the Federal Rules of Civil Procedure.”

A direct infringement claim must include the following: “(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent 'by making, selling, and using [the device] embodying the patent'; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages.” The court determined that JCMS met the Form 18 requirements and therefore properly stated a direct infringement claim.

To prove induced patent infringement, the plaintiff must “show a defendant ‘specifically intended their customers to infringe’ the patents and ‘knew that the customer[s']’” acts constituted infringement. However, JCMS failed to allege that Slomin's knew that its customers' acts were infringement. Generally, where a plaintiff alleges that a defendant provides its customers with instructions, explanations, or information on how to use an infringed product, the court will infer that the defendant intended its customers to to use the allegedly infringing devices.

A contributory infringement claim requires that the plaintiff show (1) direct infringement; (2) accused infringer knew about the patent; (3) the component has no substantial non-infringing uses; and (4) that component is a material part of the invention. JCMS failed to meet its burden of proving contributory infringement because JCMS only asserted that Slomin's business was related to security and all of the components relate to security. However, the facts are insufficient to show that there is no substantial non-infringing use. Therefore, defendant’s motion to dismiss for failure to state a claim was DENIED. Defendant’s motion to dismiss the induced infringement claim was DENIED in part and GRANTED in part. Defendant’s motion to dismiss the contributory infringement claim was GRANTED.