Echosens SA v. E-Scopics SAS (D. Mass. 24-cv-11373).

Echosans accused E-Scopics of willfully infringing several patents relating to measurements of viscoelastic properties of a viscoelastic medium, which can be used to diagnose liver fibrosis (liver is a viscoelastic medium).  E-Scopics moved to dismiss.  Judge Burroughs granted the motion in part and denied it in part.

The direct infringement claim was based on E-Scopics, a French company, having brought an accused device into the United States and then having demonstrated the accused devices at a trade show in the United States.  E-Scopics argued that bringing in a single product that is not then offered for sale does not constitute “importation” for purposes of infringement.  Judge Burroughs noted that there is actually very little case law interpreting importation, and that the existing law follows one of two approaches: (a) that importation must include an intent to commercialize to create liability, or (b) that importation alone is sufficient to create liability.  While Judge Burroughs suggested that the second of these was the best interpretation, as the statute itself distinguishes between sales and offers to sell and importation, she found that the complaint adequately pled intent to sell in any event, as it alleged that E-Scopics announced at the trade show that it would begin taking orders for the accused product.  She accordingly declined to dismiss the direct infringement claims with respect to one of the two patents.  She did dismiss the direct infringement claims with respect to the second patent because at the time of the trade show, the second patent had not yet issued and there were no allegations of importation following the issuance of that patent.

Judge Burroughs dismissed the willfulness, and indirect infringement counts with respect to the second patent as applied to any pre-complaint activities.  Each of these requires the defendant have knowledge of the patent at the time of the alleged infringement.  Echosens asserts that E-Scopics had knowledge of the second patent because it undisputedly had knowledge of the first, and the second is a child of the first, which Echosens believed was sufficient at the pleading stage.  Judge Burroughs agreed with E-Scopics that knowledge of a parent, standing alone, is insufficient, and that cases finding knowledge of a parent to suffice generally pled additional facts such as active monitoring of prosecution activities by the accused infringer or past litigation between the parties, none of which were pled.  She found that the complaint could serve to provide post-filing knowledge, however, and determined that these claims could be pursued for post-filing liability purposes only.

Judge Burroughs also refused to dismiss the induced infringement claims.  E-Scopics asserted that the claim should fail for lack of identification of a direct infringer, but Judge Burroughs pointed to case law that the creation of detailed instruction manuals can support an inference of direct infringers, at least at the pleading stage.