Jose Linares (Carmen Natale)
A federal judge in Newark has dismissed part of a patent infringement suit against Vonage Holdings after finding the plaintiff’s pleadings failed to support its claims.
The judge dismissed claims that Vonage induced users of its Voice-over-Internet Protocol phone service to infringe four patents owned by Straight Path IP Group and contributed to infringement of those patents. The suit also raises claims of direct infringement by Vonage, which are still pending.
U.S. District Judge Jose Linares said the suit failed to sufficiently establish elements of induced infringement and failed to establish the requisite intent to demonstrate contributory infringement. The judge’s ruling came before the parties engaged in discovery.
The plaintiff sought to establish intent by relying on an Aug. 6, 2006, letter to Vonage from Straight Path’s predecessor, Net2Phone. Linares said the letter did not put Vonage on notice of the infringement claims but merely solicited the company to purchase Net2Phone’s products.
Linares’ dismissal of the indirect infringement counts with prejudice follows his March 26 ruling dismissing those counts without prejudice. Following that decision, Straight Path submitted a second amended complaint April 23, but the plaintiff “failed to fix the deficiencies” in its claims, Linares said.
The plaintiff claimed its patents are infringed by Vonage’s telephone service and that the defendant knowingly induced its customers to infringe on the patents and contributed to the infringement by providing installation instructions and guidance through its website and customer call center.
To state a claim for induced infringement, a plaintiff must plead facts to raise a plausible inference that defendants knowingly induced a third party to perform specific acts, and specifically intended for those acts to infringe the patents, but Straight Path failed to establish the latter, Linares said.
On the contributory infringement claim, the plaintiff must plead facts showing that the defendant knew that its product has no substantial noninfringing use and was especially made or adapted to infringe the plaintiff’s patents, Linares said. Straight Path established the first item, but not the second, he said.
Straight Path claimed that a patent infringement suit filed by its predecessor, Net2Phone, in 2008 against Skype, a competitor of Vonage, in federal court in Arkansas, gave Vonage further notice of its own infringement. Straight Path also asserted that Vonage either conducted analysis demonstrating that it infringed the patents, or deliberately declined to conduct such an analysis. But Linares called those statements “conclusory and contradictory” and said they fail to satisfy the “rigorous” standard of demonstrating a specific intent to infringe.
Straight Path IP Group is a subsidiary of Straight Path Communications of Glen Allen, Va. It filed the suit in Norfolk, Va., federal court in November 2013. Vonage was granted a change of venue to New Jersey in January after arguing that Straight Path had minimal contacts in Virginia and its headquarters were a single room within a law office that remains dark and unoccupied during business hours. Straight Path’s virtual office in Virginia was an attempt to manipulate venue in order to secure a place on that state’s “rocket docket,” Vonage said in court papers.
Net2Phone owned the four patents that are the subject of the case until 2006, when it was acquired by IDT Corp. of Newark. IDT, in turn, spun off Straight Path in 2013.
Straight Path was represented by lawyers from Kirkland & Ellis in Chicago, who did not respond to requests for comment about the ruling. Vonage lawyer Michael Summersgill, of Wilmer Cutler Pickering Hale and Dorr in Boston, declined to comment.
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