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Nalco Co. v. Chem-Mod, LLC

Dismissal Based on Claim Interpretation Improper in Rule 12(b)(6) Order

Nalco Co. v. Chem-Mod, LLC, 2018 WL 1055851 (Fed. Cir. Feb. 27, 2018) (Moore, Schall, O’MALLEY) (N.D. Ill.: Darrah) (2 of 5 stars)

Fed Cir reverses Rule 12(b)(6) dismissal. The district court erred in concluding that Nalco’s fourth amended complaint failed to make sufficient factual allegations to support an infringement claim. The opinion rejects defendants’ contention that Nalco’s complaint lacked plausibility as to the operation of the accused process for filtering flue gas from coal-fired power plants. Many of defendants’ arguments amounted to claim construction; others involved fact issues improper in the Rule 12(b)(6) context. “It is not appropriate to resolve these disputes, or to determine whether the methods claimed in the ’692 patent should be confined to the preferred embodiment, on a Rule 12(b)(6) motion, without the benefit of claim construction.” Op. at 18.

The district court also erred in concluding that Nalco failed to adequately plead divided infringement. While the district court was correct to find that Nalco had not alleged divided infringement in the commercial context, the district court did not address Nalco’s allegation that the defendants directed/controlled use of the Chem-Mod system by others in connection with various non-commercial testing activities. Per Travel Sentry, 877 F.3d 1380 (Fed. Cir. 2017), it was sufficient for Nalco to allege that the defendants had conditioned access to certain benefits of the patented method only upon performance of various method steps.

The district court also erred in dismissing Nalco’s claim for infringement under the doctrine of equivalents. The opinion describes how Nalco sufficiently alleged that Defendants’ method was equivalent per the function-way-result test.

The district court also erred in dismissing Nalco’s claim for indirect infringement. The opinion discusses, and rejects, Defendants’ attacks on the indirect infringement claims. It concludes that Nalco sufficiently pled inducement, and had no obligation to plead “that a named Defendant engaged in the underlying direct infringement.” Op. at 33. It also concludes that Nalco sufficiently pled contributory infringement, as it adequately pled both knowledge and lack of substantial noninfringing uses.

The district court also erred in dismissing Nalco’s claim for willful infringement. Nalco sufficiently pled willfulness.

KEYWORDS: MOTION TO DISMISS; RULE 12; DIVIDED INFRINGEMENT; CONTRIBUTORY INFRINGEMENT; WILLFULNESS