Nalco Company v. Chem-Mod, LLC

United States Court of Appeals
for the Federal Circuit
______________________
NALCO COMPANY,
Plaintiff-Appellant
v.
CHEM-MOD, LLC, ARTHUR J. GALLAGHER & CO.,
GALLAGHER CLEAN ENERGY, LLC., AJG COAL,
INC., AJG IOWA REFINED COAL, LLC,
MANSFIELD REFINED COAL LLC, COPE
REFINED COAL LLC, CROSS REFINED COAL LLC,
JEFFERIES REFINED COAL, LLC, JOPPA
REFINED COAL, LLC, THOMAS HILL REFINED
COAL LLC, WAGNER COALTECH LLC, WALTER
SCOTT REFINED COAL LLC, WINYAH REFINED
COAL LLC, BEDFORD MIX LLC, BRANDON
SHORES COALTECH LLC, CANADYS REFINED
COAL, LLC, CORONADO REFINED COAL LLC,
FRM TRONA FUELS LLC, FRM VIRGINIA FUELS
LLC, GEORGE NEAL NORTH REFINED COAL LLC,
GEORGE NEAL REFINED COAL LLC, LOUISA
REFINED COAL, LLC, REFINED FUELS OF
ILLINOIS, LLC, BELLE RIVER FUELS COMPANY,
LLC,
Defendants-Appellees
______________________
2017-1036
______________________
Appeal from the United States District Court for the
Northern District of Illinois in No. 1:14-cv-02510, Senior
Judge John W. Darrah.
2 NALCO COMPANY v. CHEM-MOD, LLC
______________________
Decided: February 27, 2018
______________________
WILLIAM BRYAN FARNEY, Farney Daniels, PC,
Georgetown, TX, argued for plaintiff-appellant. Also
represented by CASSANDRA KLINGMAN.
RICHARD MARK, Gibson, Dunn & Crutcher LLP, New
York, NY, argued for defendants-appellees. Also repre-
sented by JOSEPH EVALL, PAUL J. KREMER; STEVEN ERIC
FELDMAN, SHERRY LEE ROLLO, Hahn Loeser & Parks,
LLP, Chicago, IL.
______________________
Before MOORE, SCHALL, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
Nalco Company (“Nalco”) appeals from the district
court’s decision dismissing its Fourth Amended Com-
plaint (“4AC”) with prejudice for failure to state a claim
upon which relief can be granted. The 4AC alleged in-
fringement of U.S. Patent No. 6,808,692 (“the ’692 pa-
tent”) by Appellees Chem-Mod, LLC, Arthur J. Gallagher
& Co., Gallagher Clean Energy, LLC, AJG Coal, Inc., and
various Refined Coal LLCs (collectively, “Defendants”).
Nalco Co. v. Chem-Mod, LLC (Nalco 4AC Order), No. 14-
cv-2510, 2016 WL 1594966 (N.D. Ill. Apr. 20, 2016),
reconsideration denied, Nalco Co. v. Chem-Mod, LLC
(Nalco 4AC Reconsideration Order), No. 14-cv-2510, 2016
WL 4798950 (N.D. Ill. Sept. 14, 2016). We conclude that
the district court erred in dismissing Nalco’s direct in-
fringement claims and, thus, reverse the district court’s
order as to those claims. We also reverse the district
court’s dismissal of Nalco’s doctrine of equivalents, indi-
rect, and willful infringement claims. We remand for
further proceedings in this matter.
NALCO COMPANY v. CHEM-MOD, LLC 3
I. BACKGROUND
A. The Technology
Nalco is the exclusive licensee of the ’692 patent, ti-
tled “Enhanced Mercury Control in Coal-Fired Power
Plants,” which describes a method for the removal of
elemental mercury, a toxic pollutant, from the flue gas
created by combustion in coal-fired power plants. ’692
patent, Abstract. Previous attempts to filter mercury
from coal combustion flue gas failed due to lack of com-
mercial viability or excessive expense. Id., col. 1, l. 29–col.
3, l. 51.
The methods claimed in the ’692 patent solve this
problem by reacting halogens, such as molecular chlorine
(Cl2) or molecular bromine (Br2), with elemental mercury
(Hg) in flue gas to form mercuric halides (HgCl2 or
HgBr2), which precipitate into solid particles that can be
filtered from the flue gas more easily. Molecular halides,
however, cannot be injected into the flue gas on their own
due to their corrosive properties. The ’692 patent thus
claims the injection of a halide precursor—a molecule that
reacts to create an elemental halide—into the flue gas.
The halide precursor is thermolabile, meaning that it
reacts in the heat of the flue gas to create a molecular
halide. The ’692 patent explains that the preferred loca-
tion to inject the halide precursor is in the combustion
zone of the furnace. Id., col. 4, l. 66–col. 5, l. 27.
Independent claim 1 recites:
1. A method of treating coal combustion flue gas
containing mercury, comprising:
injecting a bromide compound that is a thermola-
bile molecular bromine precursor into said flue
gas to effect oxidation of elemental mercury to a
mercuric bromide and providing alkaline solid
particles in said flue gas ahead of a particulate
4 NALCO COMPANY v. CHEM-MOD, LLC
collection device, in order to adsorb at least a por-
tion of said mercuric bromide.
J.A 27, col. 2, ll. 42–51. In a preferred embodiment de-
scribed in the ’692 patent, a source of molecular halide
(such as a bromine precursor) is injected directly into a
region of the flow path of the flue gas downstream from
the combustion zone. ’692 patent, col. 3, l. 66–col. 4, l. 11.
Alstom Power, a non-party to this action, requested
inter partes reexamination of the ’692 patent; the Patent
and Trademark Office (“PTO”) initiated a proceeding in
2009. The Patent Trial and Appeal Board (“the Board”)
affirmed the validity of the asserted claims of the ’692
patent, as amended, and the PTO issued a reexamination
certificate on April 7, 2014.
B. District Court Proceedings
Nalco filed five successive complaints against various
Defendants 1 in this proceeding, claiming that Defendants’
1 Nalco names multiple Defendants in its five com-
plaints. In the 4AC, Nalco alleges that Arthur J. Gal-
lagher & Co. (“A.J. Gallagher”) holds a controlling
interest in Chem-Mod, and therein has directed and
controlled the infringing activities of Chem-Mod. Nalco
also alleges that A.J. Gallagher has directed and con-
trolled the actions and infringement of all other Defend-
ants. Nalco alleges that Gallagher Clean Energy and
AJG Coal are wholly-owned subsidiaries of A.J. Gallagher
and have acted and infringed the ’692 patent under the
direction and control of A.J. Gallagher. Nalco contends,
finally, that the Refined Coal LLCs are “direct or indirect
subsidiaries of Defendants A.J. Gallagher, Gallagher
Clean Energy, and AJG Coal; or are companies in which
Defendants A.J. Gallagher, Gallagher Clean Energy, and
AJG Coal have substantial ownership interests; or are
companies in which Defendants A.J. Gallagher, Gallagher
NALCO COMPANY v. CHEM-MOD, LLC 5
Chem-Mod process operates in the same manner as the
process encompassed by claim 1 of the ’692 patent. The
district court dismissed Nalco’s complaints on three
separate occasions. Nalco Co. v. Chem-Mod, LLC (Nalco
1AC Order), No. 14-cv-2510, 2015 WL 507921 (N.D. Ill.
Feb. 4, 2015) (dismissing First Amended Complaint
(“1AC”) without prejudice); Nalco Co. v. Chem-Mod, LLC
(Nalco 3AC Order), No. 14-cv-2510, 2015 WL 6122811
(N.D. Ill. Oct. 15, 2015) (dismissing Third Amended
Complaint (“3AC”) without prejudice); Nalco 4AC Order,
2016 WL 1594966 (dismissing 4AC with prejudice), recon-
sideration denied, Nalco 4AC Reconsideration Order, 2016
WL 4798950. In these orders, the district court concluded
that each of Nalco’s complaints suffered from factual
deficiencies that precluded relief, as detailed further
below.
1. Original Complaint and 1AC
Nalco filed its first complaint against Chem-Mod on
April 8, 2014, one day after the PTO issued the reexami-
nation certificate for the ’692 patent. Nalco’s Compl. for
Patent Infringement, Nalco Co. v. Chem-Mod, LLC, No.
14-cv-2510 (N.D. Ill. Apr. 8, 2014), ECF No. 1. Nalco
amended its complaint to add A.J. Gallagher and Gal-
lagher Clean Energy, LLC as Defendants. Nalco’s First
Am. Compl. for Patent Infringement at 1, Nalco Co. v.
Clean Energy, and AJG Coal hold a leasehold interest
relating to the Chem-ModTM Solution.” Nalco’s Fourth
Am. Compl. for Patent Infringement at 4–5 (Nalco 4AC),
Nalco Co. v. Chem-Mod, LLC, No. 14-cv-2510 (N.D. Ill.
Nov. 16, 2015), ECF No. 108. Nalco contends the Refined
Coal LLCs were formed by A.J. Gallagher, Gallagher
Clean Energy, and/or AJG Coal. Nalco alleges the Re-
fined Coal LLCs have infringed the ’692 patent under the
direction and control of A.J. Gallagher, Chem-Mod, Gal-
lagher Clean Energy, and AJG Coal.
6 NALCO COMPANY v. CHEM-MOD, LLC
Chem-Mod, LLC, No. 14-cv-2510 (N.D. Ill. July 25, 2014),
ECF No. 14.
The 1AC alleged that these Defendants directly and
indirectly infringed the ’692 patent through the use and
licensing of the Chem-Mod Solution in the United States.
Id. at 3–6. According to the 1AC, the Chem-Mod Solution
“comprise[d] dual injection of two additives [molecular
bromine precursors MerSorb and S-Sorb] on the coal feed
belts of coal burning power generation stations before the
coal is fed into a coal combustion process.” Id. at 3. The
1AC alleged that use of the Chem-Mod Solution practices
all steps of at least claim 1 of the ’692 patent because it “is
a method of treating coal combustion flue gas containing
mercury, which requires injecting a bromide compound
that is a thermolabile molecular bromine precursor into a
flue gas to effect oxidation of elemental mercury to a
mercuric bromide.” Id. Nalco asserted that the only
difference between its patented method and Defendants’
Chem-Mod Process is that the Chem-Mod Process injects
MerSorb or S-Sorb in a different area of the plant than
described in a preferred embodiment of the ’692 patent.
The district court granted Defendants’ motion to dis-
miss the 1AC under Federal Rule of Civil Procedure
12(b)(6), concluding that the 1AC could not support a
finding of direct infringement because the ’692 patent
“differs from the Chem-ModTM Solution in both when it is
applied (after the coal is burned vs. before the coal is
burned) and how it is applied (injected into the flue gas
vs. mixed with cold coal).” Nalco 1AC Order, at *3. The
district court also dismissed Nalco’s indirect infringement
claims based on failure to state a claim for direct in-
fringement. Id.
2. 2AC and 3AC
In its Second Amended Complaint (“2AC”), Nalco at-
tempted to address what it believed was the district
court’s misunderstanding of what the ’692 patent claimed.
NALCO COMPANY v. CHEM-MOD, LLC 7
Nalco pled that Defendants infringed the ’692 patent
based on use of the Chem-Mod Solution, by mixing Mer-
Sorb or S-Sorb with coal and then injecting this mixture
(the “Chem-Mod Solution Mixture”) into flue gas to form
the mercuric bromide compound. Nalco’s Second Am.
Compl. for Patent Infringement at 7–8, Nalco Co. v.
Chem-Mod, LLC, No. 14-cv-2510 (N.D. Ill. Mar. 3, 2015),
ECF No. 64. Nalco asserted that the claims of the ’692
patent do not restrict when, where, or how the “injecting”
step is performed. Id. at 5–6. Nalco explicitly incorpo-
rated infringement contentions into this pleading. Id. at
10.
The 2AC includes as Defendants AJG Coal, Inc. and
34 John Doe limited liability company parties, unnamed
coal refinery facilities that allegedly made coal using the
Chem-Mod Solution and sold it to power plant operators.
Id. at 11. Nalco also added allegations that Defendants
acted in concert, under the direction and control of A.J.
Gallagher, to earn Section 45 tax credits from the sale of
refined coal. Id. at 10–16. Section 45 tax credits are
offered for the sale of refined coal to an unrelated person
for the production of steam in a coal-fired power plant.
Id. at 11, 13. Nalco alleged that Defendant A.J. Gallagher
formed wholly-owned subsidiary Defendants Gallagher
Clean Energy and AJG Coal, controlled and directed the
actions of Defendant Chem-Mod, and formed each of the
Defendant Refined Coal LLCs solely to use the Chem-Mod
Solution and to induce operators of coal-fired power plants
to use the Chem-Mod Solution to obtain Section 45 tax
credits. Id. at 11.
Defendants moved to dismiss the 2AC. In response,
Nalco amended its complaint to replace the John Doe coal
refineries with the 21 Refined Coal LLCs that allegedly
operate them. Nalco’s Third Am. Compl. for Patent
Infringement at 2, 4–11, Nalco Co. v. Chem-Mod, LLC,
No. 14-cv-2510 (N.D. Ill. Apr. 24, 2015), ECF No. 75.
Nalco did not alter its allegations as to the relationships
8 NALCO COMPANY v. CHEM-MOD, LLC
between the Defendant entities or their allegedly infring-
ing actions. The district court deemed Defendants’ mo-
tion to dismiss the 2AC as filed against the 3AC because
Nalco amended the 2AC before the district court resolved
the motion to dismiss.
The district court granted the motion to dismiss. On
direct infringement, the district court concluded that
Nalco failed to plead facts supporting its allegations that
the Chem-Mod Solution is “injected” as required by the
claims of the ’692 patent. Nalco 3AC Order, at *3. In the
district court’s view, the 3AC incorporated documents
showing that MerSorb is added to coal in three locations:
(1) on the coal feed belt before coal reaches the coal bun-
ker; (2) between the coal bunker and coal feeder; and
(3) in the coal feeder, before coal is pulverized. Id. In all
of these locations, the MerSorb and coal mixture is added
to the Chem-Mod process before coal combustion, prior to
interaction with flue gas, and the district court concluded
this process did not satisfy the “injecting” requirement.
Id.
The district court also held that, even if the 3AC had
successfully pled that the ’692 claims covered use of the
Chem-Mod Solution, Nalco’s “direction and control” ar-
gument failed because the 3AC failed to allege that De-
fendants were responsible “for both preparing the Chem-
Mod Solution Mixture and injecting the treated coal into
coal combustion flue gas.” Id. The district court found
that “[a]ny argument that compliance with Section 45 of
the tax code is evidence that Defendants direct and con-
trol the infringement of a patent in this case is unpersua-
sive and unconvincing.” Id. at *2.
The district court also dismissed Nalco’s indirect and
willful infringement claims for failure to plead underlying
direct infringement. Id. at *4. The district court further
found that Nalco had not pled intent to induce infringe-
ment because the district court was unpersuaded that
NALCO COMPANY v. CHEM-MOD, LLC 9
receipt of Section 45 tax credits was indicative of the
requisite intent. Id. On contributory infringement, the
district court further found that the 3AC failed to allege
facts to support the conclusion that “MerSorb and S-Sorb
have no substantial non-infringing uses.” Id.
3. 4AC and Motion for Reconsideration
Nalco makes similar allegations in the 4AC, support-
ed by incorporated infringement contentions and various
other evidence. Nalco alleges two theories of direct in-
fringement in the 4AC. First, it alleges that “[t]he Chem-
ModTM Solution involves the step of ‘injecting a bromide
compound . . . into said flue gas . . . ’ as recited in claim 1
of the ‘692 Patent.” Nalco 4AC, at 15–16. Nalco further
explains that, “[i]n the Chem-ModTM Solution, the propri-
etary additive MerSorbTM is mixed with coal . . . . The
Chem-ModTM Solution Mixture is then injected into coal
combustion flue gas to effect oxidation of elemental mer-
cury into a mercuric bromide.” Id. at 16. Alternatively,
Nalco alleges that, “when a coal combustion furnace is
operating, gases and other materials injected via coal
injectors flow under pressure into areas of the coal com-
bustion furnace beyond the areas of the furnace in which
the coal component of the Chem-Mod™ Solution Mixture
combusts and into additional areas of the furnace in
which the coal combustion flue gas exists. Thus, this is
an additional mechanism by which the MerSorb additive
component of the Chem-Mod™ Solution Mixture is ‘in-
jected into . . . coal combustion flue gas.’” Id. at 17–18.
The 4AC also pleads various ways in which Defend-
ants control or direct the performance of the steps claimed
in the ’692 patent, through commercial applications and
through testing of the Chem-Mod Solution both on pilot
scale and full scale. Id. at 26–40. The 4AC also alleges
Defendants induced infringement of, contributorily in-
fringed, and willfully infringed the ’692 patent, and that
Defendants infringed under the doctrine of equivalents.
10 NALCO COMPANY v. CHEM-MOD, LLC
The district court granted Defendants’ motion to dis-
miss the 4AC with prejudice. As in the order dismissing
the 3AC, the district court found that “the Chem-Mod
Solution differs from the ’692 Patent in both the location
and method of application.” Nalco 4AC Order, at *2. And
the district court rejected Nalco’s argument that, even if
“injecting” of the solution is restricted to a specific time or
location, Defendants still infringe the ’692 patent under
the doctrine of equivalents, finding that Nalco failed to
support its contention that Defendants perform all
claimed steps or their equivalents. Id. at *3. The district
court concluded that its dismissal of Nalco’s complaint
prior to claim construction was not premature, as the
facts Nalco pled did not support an undivided claim of
direct infringement. Id.
The district court dismissed Nalco’s divided infringe-
ment claim for the same reasons cited in its dismissal of
the 3AC: compliance with Section 45 of the tax code is
insufficient to allege that Defendants direct and control
infringement of a patent. Id. Nor, according to the dis-
trict court, was it sufficient for Nalco to allege that in-
structing power plants on the use of the Chem-Mod
Solution Mixture demonstrated any control over the
plants’ performance of any infringing method steps. Id.
The district court also refused to find that Nalco had
alleged sufficiently that Defendants partnered in a joint
enterprise with coal-fired power plant operators—finding
that the existence of a contract between the Refined Coal
LLCs and several power plants for purchase of the Chem-
Mod Solution Mixture was insufficient to establish a joint
enterprise, or an equal right of control. Id. at *4.
Again, the district court rejected Nalco’s claims for in-
duced and contributory infringement due to a failure to
plead direct infringement. Id. The district court also
found that Nalco failed to plead an induced infringement
claim because it failed to plead facts indicating an intent
to induce infringement. Id.
NALCO COMPANY v. CHEM-MOD, LLC 11
Nalco filed a motion for reconsideration and attached
additional intrinsic and extrinsic evidence. The district
court denied Nalco’s motion for reconsideration, finding
that Nalco failed to establish “manifest error of law or
fact.” Nalco 4AC Reconsideration Order, at *3. The
district court also denied Nalco’s request to allow it to,
once again, amend the complaint because Nalco had
multiple opportunities to present and incorporate its new
evidence into a prior pleading yet had failed to do so. Id.
at *2–3.
Nalco timely appealed from the district court’s final
decision. We have jurisdiction over this appeal under 28
U.S.C. § 1295(a)(1).
II. DISCUSSION
Federal Rule of Civil Procedure 8(a)(2) “generally re-
quires only a plausible ‘short and plain’ statement of the
plaintiff’s claim,” showing that the plaintiff is entitled to
relief. Skinner v. Switzer, 562 U.S. 530 (2011). “Because
it raises a purely procedural issue, an appeal from an
order granting a motion to dismiss for failure to state a
claim upon which relief can be granted is reviewed under
the applicable law of the regional circuit.” In re Bill of
Lading Transmission & Processing Sys. Patent Litig., 681
F.3d 1323, 1331 (Fed. Cir. 2012) (citing McZeal v. Sprint
Nextel Corp., 501 F.3d 1354, 1355–56 (Fed. Cir. 2007));
C & F Packing Co. v. IBP, Inc., 224 F.3d 1296, 1306 (Fed.
Cir. 2000)). The Seventh Circuit reviews a district court’s
dismissal for failure to state a claim under Rule 12(b)(6)
de novo, and the district court’s decision to dismiss with
prejudice under Rule 12(b)(6) for abuse of discretion.
Manistee Apartments, LLC v. City of Chi., 844 F.3d 630,
633 (7th Cir. 2016). In so doing, the Seventh Circuit
“assume[s] all well-pleaded allegations are true and
draw[s] all reasonable inferences in the light most favora-
ble to the plaintiff.” Id.
12 NALCO COMPANY v. CHEM-MOD, LLC
Nalco contests the district court’s dismissal of its di-
rect and indirect infringement claims separately, and we
examine each in turn.
A. Direct Infringement
Rule 12(b)(6) permits a defendant to move to dismiss
a complaint for “failure to state a claim upon which relief
can be granted.” Fed. R. Civ. P. 12(b)(6). To survive a
motion to dismiss under Rule 12(b)(6), a complaint must
“contain sufficient factual matter, accepted as true, to
‘state a claim to relief that is plausible on its face.’”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To meet
this requirement, the plaintiff must plead “factual content
that allows the court to draw the reasonable inference
that the defendant is liable for the misconduct alleged”;
put another way, the plaintiff must do more than plead
facts “‘merely consistent with’ a defendant’s liability.” Id.
(quoting Twombly, 550 U.S. at 556–57). When ruling on a
motion to dismiss under Rule 12(b)(6), the court accepts
all well-pleaded factual allegations as true and construes
all reasonable inferences in favor of the plaintiff. Id. 2
2 Nalco argues that Form 18 of the Appendix of
Forms to the Federal Rules of Civil Procedure (“Form 18”)
provides the relevant pleading standard for certain claims
in this case, because Form 18 was not abrogated until
after the 4AC was filed. Titled “Complaint for Patent
Infringement,” Form 18 provided a sample allegation of
direct infringement. We have held previously that com-
pliance with Form 18 “effectively immunize[d] a claimant
from attack regarding the sufficiency of the pleading.” K-
Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714
F.3d 1277, 1283 (Fed. Cir. 2013) (internal citation omit-
ted). Nalco argues that all of its complaints should have
been entitled to this leeway, at least with respect to its
NALCO COMPANY v. CHEM-MOD, LLC 13
As noted, the district court concluded that the “Chem-
Mod Solution differs from the ‘692 Patent in both the
location and method of application.” Nalco 4AC Order, at
*2. Nalco contends that the district court erred in this
conclusion because, at least implicitly, the district court
must have construed the term “flue gas” to mean gas
resulting from coal combustion only when that gas passes
through a region downstream of the combustion zone.
Nalco argues that the district court incorrectly construed
the term “injecting” to be limited to the first time the
bromine precursor is applied to coal. Nalco asserts that
the district court equated the place mixing occurs (which
is outside of the plant) with the site of “injection,” and
determined that injection at that location did not satisfy
the requirements of the ’692 patent claims. Nalco con-
tends that the resolution of its claims will depend on the
construction of the terms “flue gas” and “injecting,” and
that resolution of this claim construction dispute was
inappropriate at the Rule 12(b)(6) stage of the proceed-
ings.
Defendants do not seem to challenge that Nalco met
the notice requirement of FRCP Rule 8 or the pleading
standard required under Twombly and Iqbal. Instead,
Defendants assert that Nalco’s infringement claims
simply are not plausible because “a party may plead itself
out of court by pleading facts that establish an impene-
trable defense to its claims.” Tamayo v. Blagojevich, 526
F.3d 1074, 1086 (7th Cir. 2008) (citing Massey v. Merrill
Lynch & Co., Inc., 464 F.3d 642, 650 (7th Cir. 2006)).
Defendants contend that Nalco has done just this.
direct infringement claims. We need not resolve this
question because, as explained below, we find Nalco’s 4AC
sufficient under the current version of the Federal Rules
and those cases interpreting those rules.
14 NALCO COMPANY v. CHEM-MOD, LLC
Nalco makes several allegations about the proper
scope of the ’692 patent relevant to this analysis:
The claims of the ’692 Patent do not restrict when
the step of “injecting a bromide compound . . . into
said [coal combustion] flue gas” . . . must be per-
formed.
[T]he claims of the ’692 Patent do not restrict
whether the step of “injecting a bromide com-
pound . . . into said [coal combustion] flue
gas” . . . be performed by injecting only a thermo-
labile molecular bromine precursor, or injecting a
thermolabile molecular bromine precursor in
combination with other compounds.
[T]he claims of the ’692 Patent do not restrict the
specific mechanism by which or location within
the coal-fired power plant at which the claimed
“injecting” must occur.
As explained in the ’692 Patent, “coal combustion
flue gas” is the gas that is created during the
combustion of coal.
Nalco 4AC, at 14–15.
And, as noted, Nalco asserts two main theories of di-
rect infringement—each explaining how use of the Chem-
Mod Solution could plausibly involve injecting a thermo-
labile bromine precursor into coal combustion flue gas.
First, Nalco contends that Defendants infringe by “inject-
ing” the Chem-Mod Solution Mixture, MerSorb mixed
with coal, into coal combustion flue gas via coal injectors
in the furnace:
The Chem-ModTM Solution involves the step of
“injecting a bromide compound . . . into said flue
gas . . .” as recited in claim 1 of the ’692 Patent.
In the Chem-ModTM Solution, the proprietary ad-
ditive MerSorbTM is mixed with coal (the “Chem-
NALCO COMPANY v. CHEM-MOD, LLC 15
ModTM Solution Mixture”). The Chem-Mod Solu-
tion Mixture is then injected into coal combustion
flue gas to effect oxidation of elemental mercury
into a mercuric bromide.
When a coal combustion furnace is operating, the
coal component of the Chem-ModTM Solution Mix-
ture combusts to create coal combustion flue gas.
This coal combustion flue gas is present through-
out the operating coal combustion furnace, includ-
ing the site at which the Chem-Mod Solution
MixtureTM is injected via coal injectors into the
operating coal-fired power plant.
Nalco 4AC, at 15–17 (citations omitted).
Nalco also contends, alternatively, that:
[W]hen a coal combustion furnace is operating,
gases and other materials injected via coal injec-
tors flow under pressure into areas of the coal
combustion furnace beyond the areas of the fur-
nace in which the coal component of the Chem-
ModTM Solution Mixture combusts and into addi-
tional areas of the furnace in which the coal com-
bustion flue gas exists. Thus, this is an additional
mechanism by which the MerSorb additive com-
ponent of the Chem-Mod™ Solution MixtureTM is
“injected into . . . coal combustion flue gas.”
[W]hen the Chem-ModTM Solution Mixture is in-
jected via coal injectors into an operating coal-
fired power plant, a “bromide compound that is a
thermolabile molecular bromine precursor” is “in-
jected” into “coal combustion flue gas to effect oxi-
dation of elemental mercury to a mercuric
bromide” as recited in claim 1 of the ’692 Patent.
16 NALCO COMPANY v. CHEM-MOD, LLC
Id. at 17–18. According to Nalco, this method also results
in injection of the MerSorb additive into coal combustion
flue gas. Id. 3
We agree with Nalco that the 4AC plausibly alleges
both direct infringement theories. First, Nalco plausibly
has alleged that “injection” occurs when treated coal is fed
into the furnace for combustion, where it encounters coal
combustion flue gas. Nalco alleges that “coal combustion
flue gas is present throughout the operating coal combus-
tion furnace, including the site at which the Chem-ModTM
Solution Mixture is injected via coal injectors into the
operating coal-fired power plant.” Id. at 17. Nalco pled
that the ’692 claims do not restrict when injection occurs,
whether injection can occur through injecting the bromine
precursor alone or mixed with other compounds such as
coal, or the specific mechanism for injection. Id. at 14–15.
The claims require injecting a bromine precursor into flue
gas. Nalco is entitled to all inferences in its favor on its
theory that, when treated coal is injected into the furnace,
this constitutes the required injection of the bromine
precursor.
Defendants’ objections to this theory of infringement
read like classic Markman arguments. Defendants first
3 Defendants argued in their appellate briefing that
Nalco alleges a third theory of infringement (named
“Theory 1” in the briefing)—claim 1 requires injecting a
bromide precursor into the flue gas and that injection
could be performed through the preparation of refined
coal by mixing MerSorb with cold coal. Appellee Br. 24–
25; Nalco 4AC, at 15. In reply, Nalco clarifies that it
alleges only two theories of infringement, and that this
theory is an incomplete restatement of Nalco’s theory that
Defendants infringe through injection of the Chem-Mod
Solution Mixture into coal combustion flue gas. Appellant
Reply Br. 3.
NALCO COMPANY v. CHEM-MOD, LLC 17
take issue with Nalco’s allegation that “coal combustion
flue gas” is “the gas that is created during the combustion
of coal.” Id. at 15. But Defendants’ arguments boil down
to objections to Nalco’s proposed claim construction for
“flue gas,” a dispute not suitable for resolution on a mo-
tion to dismiss.
Defendants also object to this theory based on an
“admission” they claim Nalco made before the Board
during the inter partes reexamination. There, Nalco
stated that “flue gas” is combustion gas that “reside[s] in
the ‘flue’—the region of a coal combustor from above the
combustion zone through the particulate collection sys-
tem.” J.A. 4816 (emphases added). Based on this state-
ment, Defendants ask us to conclude that, under any
construction, the term “flue gas” cannot encompass the
coal combustion gas in the “combustion zone” of the lower
furnace, where Nalco alleges the “coal injectors” are
located. See Nalco 4AC, at 16.
Nalco disputes Defendants’ interpretation of these
reexamination statements. Resolution of that dispute,
even if part of the record that can be considered, is partic-
ularly inappropriate in the Rule 12(b)(6) context.
Nalco has also adequately pled its alternative in-
fringement theory: that “injection” occurs when a thermo-
labile bromine precursor flows under pressure through
the furnace until it reaches flue gas. Nalco pled that the
’692 method does not restrict either when or where the
injecting step occurs. Id. at 14–15. Nalco also alleges
that the coal combustion flue gas created from combustion
of the Chem-Mod Solution Mixture “is present throughout
the operating coal combustion furnace,” including where
the mixture is injected. Id. at 17. Even if the term “flue
gas” were to be construed as limited to a particular loca-
tion, Nalco alleges that injecting a molecular bromine
precursor into the combustion zone will result in that
18 NALCO COMPANY v. CHEM-MOD, LLC
precursor flowing under pressure into the alleged “flue”
area. Id. at 17–18.
The only argument Defendants make regarding the
implausibility of this theory is that the thermolabile
bromine precursor could not survive the extreme heat of
the combustion areas of the furnace without decomposing,
as thermolabile materials are unstable when heated.
Defendants’ objection relies on a factual finding that a
thermolabile material could not survive passing from the
combustion zone to the flue. But Defendants have not
explained why we should—or could—make such a finding
at this stage in light of Nalco’s explicit pleadings to the
contrary. Nor does any of the evidence cited by the par-
ties indicate that Nalco has pled itself out of court. Nalco
asserts that Felsvang (U.S. Patent No. 5,435,980), cited
on the face of the ’692 patent, teaches injecting a thermo-
labile halide precursor into the combustion zone to have
an effect in the flue region. Nalco asserts that the inven-
tor of the ’692 patent developed the claimed invention by
mixing coal with a bromine precursor and then injecting
the treated coal mixture into the combustion zone. Nalco
also cites to the Board’s rejection of the position that
“thermolabile” included a temperature restriction. J.A.
4913. Though Nalco was not required to provide eviden-
tiary support for its claims at this stage of the proceed-
ings, its evidence is not inconsistent with its claims as the
district court seemed to believe.
As Nalco explained, these disputes between the par-
ties hinge on where “flue gas” may be located within the
power plant and what limitations are appropriate on
where “injecting” may occur. It is not appropriate to
resolve these disputes, or to determine whether the meth-
od 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. The “purpose of a
motion to dismiss is to test the sufficiency of the complaint,
not to decide the merits.” Gibson v. City of Chi., 910 F.2d
NALCO COMPANY v. CHEM-MOD, LLC 19
1510, 1520 (7th Cir. 1990) (emphasis added) (citation
omitted). The plausibility standard “does not impose a
probability requirement at the pleading stage; it simply
calls for enough fact to raise a reasonable expectation that
discovery will reveal evidence” to support the plaintiff’s
allegations. Twombly, 550 U.S. at 556.
Nalco need not “prove its case at the pleading stage.”
Bill of Lading, 681 F.3d at 1339 (citing Skinner, 562 U.S.
at 529–30). The complaint must place the “potential
infringer . . . on notice of what activity . . . is being ac-
cused of infringement.” K-Tech, 714 F.3d at 1284. Nalco’s
pleading clearly exceeds the minimum requirements
under Rule 12(b)(6), especially as “the Federal Rules of
Civil Procedure do not require a plaintiff to plead facts
establishing that each element of an asserted claim is
met.” Bill of Lading, 681 F.3d at 1335. The district
court’s failure to credit these allegations as true is re-
versible error.
We turn next to the aspects of Nalco’s claims related
to divided infringement. Nalco alleges three ways in
which performance of all steps of claim 1 of the ’692
patent can be attributed to Defendants. Nalco pleads
that, as to Defendants’ commercial applications, Defend-
ants operate the process that treats coal with the Chem-
Mod Solution at a power plant, and then contract to
provide that treated coal to the power plant. Nalco 4AC,
at 30–40. Nalco alleges that Defendants have engaged in
controlling and directing operation of a test facility in
North Dakota that carries out all steps of the claim. Id.
at 26–29. Nalco also contends that Defendants directly
infringed the ’692 patent through full-scale testing of the
Chem-Mod Solution. Id. at 28–30.
The district court concluded that, even if Nalco had
adequately pled that the Chem-Mod Solution infringed
the ’692 patent, Nalco failed to allege that any Defendant
is directly responsible for performing all method steps
20 NALCO COMPANY v. CHEM-MOD, LLC
recited in the ’692 patent. Nalco 4AC Order, at *3–4. The
district court focused its analysis exclusively on the
commercial activity claim, noting that it had, in the order
dismissing the 3AC, rejected Nalco’s contention that
compliance with Section 45 of the tax code indicated
Defendants’ direction and control of the coal-fired power
plant’s performance. Id. at *3.
Nalco does not appeal the district court’s dismissal of
its commercial activity allegations. See Appellant Reply
Br. 19. And, Nalco does not challenge the district court’s
conclusion that benefitting from Section 45 tax credits by
sale of the Chem-Mod Solution to coal-fired power plants
is insufficient to show that Defendants have engaged in a
joint enterprise with those power plants or directed the
activities of those plants.
We conclude, on the other hand, that the 4AC plausi-
bly states a claim that Defendants direct or control use of
the Chem-Mod Solution in connection with the pilot-scale
and full-scale testing of the solution. Importantly, the
district court never addressed these allegations in its
dismissal order. And, the Defendants neither denied
them in an answer, nor challenged them in the motion to
dismiss, nor defended their dismissal in this appeal.
Defendants merely rely on their arguments as to the
scope of the “flue gas” and “injecting” limitations, explain-
ing that the process involved in the testing does not
involve injecting a bromine precursor into flue gas. For
the reasons explained, however, we reject those argu-
ments.
“Direct infringement under § 271(a) occurs where all
steps of a claimed method are performed by or attributa-
ble to a single entity.” Akamai Techs., Inc. v. Limelight
Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en
banc) (citing BMC Res., Inc. v. Paymentech, L.P., 498 F.3d
1373, 1379–81 (Fed. Cir. 2007)). The key inquiry,
“[w]here more than one actor is involved in practicing the
NALCO COMPANY v. CHEM-MOD, LLC 21
steps,” is whether “the acts of one are attributable to the
other such that a single entity is responsible for the
infringement.” Id. (emphasis added). In Akamai, we
explained that an entity would be held responsible for the
performance of method steps by others “where that entity
directs or controls others’ performance,” or “where the
actors form a joint enterprise.” Id. And we noted that,
although we had previously held an actor:
[L]iable for infringement under § 271(a) if it acts
through an agent (applying traditional agency
principles) or contracts with another to perform
one or more steps of a claimed method . . . liability
under § 271(a) can also be found when an alleged
infringer conditions participation in an activity or
receipt of a benefit upon performance of a step or
steps of a patented method and establishes the
manner or timing of that performance.
Id. at 1023 (emphasis added) (citing Metro–Goldwyn–
Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930
(2005)).
As we explained in Travel Sentry, Inc. v. Tropp, 877
F.3d 1370 (Fed. Cir. 2017), Akamai “broaden[ed] the
circumstances in which others’ acts may be attributed to
an accused infringer to support direct-infringement
liability for divided infringement, relaxing the tighter
constraints on such attribution reflected in our earlier
precedents.” Id. at 1381 (alteration in original) (quoting
Mankes v. Vivid Seats Ltd., 822 F.3d 1302, 1305 (Fed. Cir.
2016)). Our case law emphasizes “the importance of
correctly identifying the relevant ‘activity’ or ‘benefit’ that
is being conditioned upon the performance of one or more
claim steps. The cases also emphasize that the context of
the claims and conduct in a particular case will inform
whether attribution is proper under [Akamai’s] two-prong
test.” Id. at 1380. And, “a common thread connects” our
case law on divided infringement, no matter the relation-
22 NALCO COMPANY v. CHEM-MOD, LLC
ship between the parties: we look for “evidence that a
third party hoping to obtain access to certain benefits can
only do so if it performs certain steps identified by the
defendant, and does so under the terms prescribed by the
defendant.” Id.
Nalco makes multiple allegations about Defendants’
direction or control of the pilot-scale testing at the North
Dakota facility:
The Defendants directly perform pilot scale test-
ing that involves using the Chem-ModTM Solution.
The Refined Coal LLCs perform and contract for
pilot scale testing of the Chem-ModTM Solution.
On information and belief, this pilot scale testing
occurs at the Energy and Environmental Research
Center (“EERC”) of the University of North Dako-
ta. The EERC at the University of North Dakota
is an academic research facility that performs
testing on coal combustion.
In connection with this pilot scale testing, a single
testing facility–including the EERC–performs
each step of the methods claimed in the ’692 Pa-
tent at the direction and control of the Refined
Coal LLCs.
This pilot scale testing includes preparing the
Chem-ModTM Solution Mixture at specific operat-
ing conditions using a specific concentration of
MerSorb and S-Sorb and a sample of specific type
of coal actually used at a subject power plant; in-
jecting the Chem-ModTM Solution Mixture into
coal combustion flue gas; thereby injecting a bro-
mide compound that is a thermolabile molecular
bromine precursor into the coal combustion flue
gas to effect oxidation of elemental mercury to a
mercuric bromide as recited in claim 1 of the ’692
Patent; and measuring the emissions of said pro-
cess to confirm the use of the Chem-ModTM Solu-
NALCO COMPANY v. CHEM-MOD, LLC 23
tion has achieved the desired effect of reducing
mercury in such emissions.
Each of these steps is taken pursuant to the ex-
press direction and control of the Defendants.
Nalco 4AC, at 26–27. Nalco also incorporated an EERC
document noting that the EERC performed pilot-scale
testing of the Chem-Mod Solution as an agent for various
Defendants (certain of the Refined Coal LLCs and A.J.
Gallagher). Id. at 27–28.
Nalco alleges that Defendants directly perform full-
scale testing at coal-fired power plants:
In connection with this full-scale testing, the De-
fendants themselves either performed each steps
[sic] of the methods claimed in the ’692 Patent, or
a single power plant operator performed each such
step at the direction and control of the Defend-
ants.
Id. at 28. Nalco incorporated into the complaint images
from a presentation given by Defendants that describes
seven full-scale burn tests conducted at coal-fired power
plants. According to Nalco, the presentation shows the
equipment setup for the tests and describes the reduction
of mercury for various types of coal tested. The presenta-
tion notes that, in test results, no issues were identified.
The presentation also explains that Defendants controlled
all aspects of the power plant operations during the test.
Id. at 28–29.
Nalco also incorporated images captured from Chem-
Mod’s website detailing Defendants’ testing of the Chem-
Mod Solution, and highlighted relevant statements in the
4AC:
Defendant Chem-Mod’s own website includes a
detailed description that the pilot-scale and full-
scale testing at coal-fired power plants of the
24 NALCO COMPANY v. CHEM-MOD, LLC
Chem-ModTM Solution included full use of the
Chem-ModTM Solution and included the meas-
urement of mercury emissions.
The Chem-Mod website states: “The Chem-Mod™
Solution has a track record built on more than six
years of pilot- and full-scale testing.”
The Chem-Mod website states: “As a result, the
product is fully commercialized and currently in
use at eight power generating stations.”
The Chem-Mod website also references the testing
at the EERC: “For its initial testing, Chem-Mod
coordinated with the Energy & Environmental
Resource Center (EERC) at the University of
North Dakota, one of the leading clean energy
technology laboratories in the world.”
Nalco 4AC, at 29 (citations omitted).
And, Nalco notes that a paper attached to the 4AC,
entitled “Advanced in Refined Coal Technology for Emis-
sions Reduction,” details the pilot-scale testing “setup and
test procedures” used to test the Chem-Mod Solution at
the EERC, including testing for mercury reduction. Id.
This paper also describes the full-scale testing procedures,
noting that “the chemicals [MerSorb] are further mixed
with the coal in the grinding process. Stack emissions
measurements are made using a variety of equipment and
gas sampling methods . . . . The paper reports the reduc-
tion in mercury emissions using the Chem-ModTM Solu-
tion after the Chem-ModTM Solution Mixture is injected
into coal combustion flue gas.” Id. at 30.
We conclude that these allegations adequately plead
attribution of the testing activities to Defendants.
Whether as part of the pilot-scale or full-scale testing,
Nalco alleges that the facility conducting the test engages
in a specified activity—performing each step of the meth-
ods claimed in the ’692 patent as part of the testing.
NALCO COMPANY v. CHEM-MOD, LLC 25
Nalco’s pleading also alleges that performance of testing
can be attributed to the actions of Defendants—this
performance is conditioned on obtaining monetary bene-
fits for performing the test requisitioned by Defendants.
For the purpose of the attribution analysis, it does not
matter whether the facility conducting the test is an
educational facility, a non-Defendant coal-fired power
plant, or a named Defendant; what matters is that, ac-
cording to Nalco’s allegations, the testing can be attribut-
ed to Defendants because the facility performing the test,
and therein allegedly using the method described in the
’692 patent, was directed to do so by Defendants.
Our case law does not require more at the pleading
stage, nor does any of the evidence Nalco attached to the
complaint contradict any of Nalco’s allegations. Nalco’s
testing claims satisfy the pleading requirements for
divided infringement, and we reinstate them accordingly.
B. Doctrine of Equivalents
Nalco also alleges that, even if the claims require that
“injection” occurs at a particular time or location, or if the
claims require that “injecting” is limited to a thermolabile
molecular bromine precursor rather than a mixture of a
thermolabile molecular bromine precursor mixed with
other additives and/or coal, the Chem-Mod Solution would
still infringe the ’692 patent under the doctrine of equiva-
lents. Id. at 18. The district court dismissed this claim
after finding that Nalco had failed to adequately allege
that Defendants’ use of the Chem-Mod Solution required
performance of all steps or the equivalent claim limita-
tions of the ’692 patent, particularly the “injecting” of
bromide into flue gas. Nalco 4AC Order, at *3.
“[A] product or process that does not literally infringe
upon the express terms of a patent claim may nonetheless
be found to infringe if there is ‘equivalence’ between the
elements of the accused product or process and the
claimed elements of the patented invention.” Warner-
26 NALCO COMPANY v. CHEM-MOD, LLC
Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21
(1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods.
Co., 339 U.S. 605, 609 (1950)). “A finding of infringement
under the doctrine of equivalents requires a showing that
the difference between the claimed invention and the
accused product or method was insubstantial or that the
accused product or method performs the substantially
same function in substantially the same way with sub-
stantially the same result as each claim limitation of the
patented product or method.” AquaTex Indus., Inc. v.
Techniche Sols., 479 F.3d 1320, 1326 (Fed. Cir. 2007).
“An analysis of the role played by each element in the
context of the specific patent claim will thus inform the
inquiry as to whether a substitute element matches the
function, way, and result of the claimed element.” Warn-
er-Jenkinson, 520 U.S. at 40.
Nalco explicitly incorporated detailed infringement
contentions explaining its doctrine of equivalents claim,
and in particular how Defendants’ use of the Chem-Mod
Solution method satisfies the “injecting” claim element, in
the 4AC. Nalco 4AC, at 18; J.A. 2436–38. Those allega-
tions explain that, in Nalco’s view, injecting MerSorb,
whether mixed with other additives and/or coal, “into a
coal-fired plant is at least equivalent to injecting a bro-
mide compound that is a thermolabile molecular bromine
precursor into coal combustion flue gas.” J.A. 2437.
According to Nalco, the function of the disputed “inject-
ing” claim element is to “make the thermolabile molecular
bromine precursor available to decompose at tempera-
tures typical of coal combustion flue gas. When MerSorb
mixed with other additives and/or coal is injected into an
operating coal-fired plant, MerSorb is available to decom-
pose at temperatures typical of coal combustion flue gas.”
Id. Nalco explains that the injection of MerSorb, mixed
with other additives and/or coal, into a coal-fired plant
leads to interaction between the thermolabile bromine
precursor and coal combustion flue gas such that the
NALCO COMPANY v. CHEM-MOD, LLC 27
bromine precursor decomposes to species that are precur-
sors to molecular bromine, which oxidizes elemental
mercury. Id. This method achieves the function the ’692
method claims in substantially the same manner as the
literal claim element, according to Nalco. Nalco contends
that, when MerSorb mixed with other additives and/or
coal is injected into a coal-fired plant, it decomposes to
elemental bromine precursors which effect oxidation of
mercury—substantially the same as the literal claim
element. J.A. 2438. Defendants have failed to explain
why these allegations do not adequately state a claim
under the doctrine of equivalents, and we see no reason
why these allegations are insufficient to plead infringe-
ment by equivalents.
We conclude that Nalco’s doctrine of equivalents claim
adequately states a claim for infringement under the
Twombly and Iqbal pleading standard. We therefore
reverse the district court’s dismissal of Nalco’s claim of
infringement under the doctrine of equivalents.
C. Indirect Infringement
The district court dismissed Nalco’s indirect infringe-
ment claims for failure to adequately plead a direct in-
fringement claim. Nalco 4AC Order, at *4. The district
court also found Nalco had failed to plead intent as to its
inducement claim. Id. Nalco appeals, and for the reasons
stated below, we reverse the district court’s dismissal of
these claims.
“It is axiomatic that ‘[t]here can be no inducement or
contributory infringement without an underlying act of
direct infringement.’” Bill of Lading, 681 F.3d at 1333
(quoting Linear Tech. Corp. v. Impala Linear Corp., 379
F.3d 1311, 1326 (Fed. Cir. 2004)). The district court
dismissed these claims as pled in the 4AC, at least in
part, because it found that Nalco had not adequately pled
a claim for direct infringement. Nalco 4AC Order, at *4.
We reverse the district court’s dismissal of the indirect
28 NALCO COMPANY v. CHEM-MOD, LLC
infringement claims insofar as it relied on failure to plead
a direct infringement claim.
Defendants raise various other challenges to Nalco’s
induced and contributory infringement claims. For the
reasons stated below, we find that these objections are
without merit and, thus, reinstate Nalco’s indirect in-
fringement claims.
1. Induced Infringement
“Whoever actively induces infringement of a patent
shall be liable as an infringer.” 35 U.S.C. § 271(b) (2012).
Liability under § 271(b) “requires knowledge that the
induced acts constitute patent infringement.” Global-
Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766
(2011). “For an allegation of induced infringement to
survive a motion to dismiss, a complaint must plead facts
plausibly showing that the accused infringer ‘specifically
intended [another party] to infringe [the patent] and
knew that the [other party]’s acts constituted infringe-
ment.’” Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d
1372, 1379 (Fed. Cir. 2017) (alterations in original) (quot-
ing Bill of Lading, 681 F.3d at 1339).
In the 4AC, Nalco alleged that Defendants had
knowledge of the ’692 patent and performed various
activities with specific intent to induce others, including
the Refined Coal LLCs and their coal-fired power plant
customers, to infringe by, among other activities, provid-
ing instructions, support, and technical assistance for the
use of the Chem-Mod Solution. Nalco 4AC, at 24–25; id.
at 42–44 (alleging induced infringement by Defendant
Chem-Mod using the Refined Coal LLCs and coal-fired
power plant operators); id. at 46–47 (alleging induced
infringement by Defendant A.J. Gallagher); id. at 49–51
(alleging induced infringement by Defendant Gallagher
Clean Energy); id. at 53–54 (alleging induced infringe-
ment by Defendant AJG Coal); id. at 56–57 (alleging
induced infringement by Refined Coal LLCs using other
NALCO COMPANY v. CHEM-MOD, LLC 29
Refined Coal LLCs and coal-fired power plant operators).
The district court dismissed the indirect infringement
claims, concluding that “Nalco has not sufficiently pled a
claim for direct infringement or intent to cause infringe-
ment.” Nalco 4AC Order, at *4.
Defendants argue that Nalco waived its challenge to
the dismissal of its induced infringement claim by failing
to argue the district court erred in concluding that Nalco
had not pled intent in the 4AC. In its opening brief, Nalco
addressed this issue in a footnote, stating that, “[a]s to
inducement, the [district] court may also have based its
decision on a conclusion that Nalco failed to plead ‘intent,’
but this would be plain error.” Appellant Br. 60 n.20
(citing Nalco 4AC, at 20–30, 34, 42–44). Defendants
contend this statement contains no argument, and there-
fore Nalco has waived any challenge on this point on
appeal.
We decline to find Nalco waived its challenge to the
district court’s determination that it failed to plead intent,
however, as “[a]n appellate court retains case-by-case
discretion over whether to apply waiver.” Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1251 (Fed. Cir. 2005) (citing
Singleton v. Wulff, 428 U.S. 106, 120 (1976), and Interac-
tive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
1344 (Fed. Cir. 2001)). The district court’s treatment of
the inducement claim was cursory, and Nalco addressed
the underlying direct infringement claim as well as intent
in its opening brief by citing to multiple allegations in the
4AC that plead Defendants’ intent to infringe.
For an allegation of induced infringement to survive a
motion to dismiss, the complaint must plead facts plausi-
bly showing that the accused infringer “specifically in-
tended [another party] to infringe [the patent] and knew
that the [other party]’s acts constituted infringement.”
Bill of Lading, 681 F.3d at 1339. The 4AC alleges facts
that plausibly show Defendants specifically intended their
30 NALCO COMPANY v. CHEM-MOD, LLC
customers to infringe the ’692 patent, and that Defend-
ants knew the customers’ actions would constitute in-
fringement. Despite Defendants’ arguments to the
contrary, the 4AC does not only plead Defendants’
knowledge of the ’692 patent—it alleges that Defendants
acted with specific intent to induce infringement of the
’692 patent by the Refined Coal LLCs and other down-
stream customers of the Chem-Mod Solution. See Nalco
4AC, at 24–25; id. at 42–44; id. at 49–51; id. at 53–54; id.
at 56–57.
Nor was Nalco required to plead that a named De-
fendant engaged in the underlying direct infringement;
Nalco’s allegations that, in certain circumstances, a non-
Defendant power plant operator or testing facility is the
direct infringer who actually performs the injection of the
thermolabile bromine precursor into flue gas is sufficient
to state a claim for indirect infringement. Nalco 4AC, at
27. For these reasons, we reverse the district court’s
dismissal of Nalco’s induced infringement claim.
2. Contributory Infringement
Contributory infringement occurs if a party sells, or
offers to sell, “a component of a patent-
ed . . . combination, . . . or a material . . . for use in prac-
ticing a patented process, constituting a material part of
the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such
patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use.” 35 U.S.C.
§ 271(c) (2012).
In the 4AC, Nalco alleges that Defendants have con-
tributorily infringed the ’692 patent through selling and
offering to sell MerSorb and S-Sorb to operators of coal-
fired power plants and/or the Refined Coal LLCs. Nalco
4AC, at 42, 45, 48–49, 52, 55–56. Nalco contends that
Defendants had knowledge of the ’692 patent or were
willfully blind to its existence, and that MerSorb and S-
NALCO COMPANY v. CHEM-MOD, LLC 31
Sorb were known by Defendants to be especially made or
adapted for infringing the ’692 patent. Id. The district
court dismissed this claim based solely on its finding that
Nalco had failed to plead direct infringement. Nalco 4AC
Order, at *4. 4
Defendants argue Nalco failed to plead that Defend-
ants had the requisite intent to infringe the ’692 patent,
but Nalco was not required to plead intent.
“[C]ontributory infringement requires knowledge of the
patent in suit and knowledge of patent infringement.”
Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920,
1926 (2015) (citing Aro Mfg. Co. v. Convertible Top Re-
placement Co., 377 U.S. 476, 488 (1964)). “[C]ontributory
infringement requires ‘only proof of a defendant’s
knowledge, not intent, that his activity cause[s] infringe-
ment.’” Lifetime, 869 F.3d at 1381 (emphasis in original)
(quoting Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1469 (Fed. Cir. 1990)). Nalco explicitly pled
facts to show Defendants’ knowledge, prior to filing of the
suit, of the ’692 patent and that MerSorb and S-Sorb were
especially made or adapted for infringing it, and Defend-
ants do not argue to the contrary. Nalco 4AC, at 40.
Defendants also contend that Nalco failed to allege
that MerSorb and S-Sorb have no substantial noninfring-
ing use. A substantial noninfringing use is any use that
is “not unusual, far-fetched, illusory, impractical, occa-
sional, aberrant, or experimental.” Vita-Mix Corp. v.
Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009).
“For purposes of contributory infringement, the inquiry
focuses on whether the accused products can be used for
4 In its order dismissing the 3AC, the district court
found Nalco failed to adequately plead that the Chem-
Mod materials had noninfringing uses. Nalco 3AC Order,
at *4. The district court did not reference that finding in
its order dismissing the 4AC.
32 NALCO COMPANY v. CHEM-MOD, LLC
purposes other than infringement.” Bill of Lading, 681
F.3d at 1338 (emphasis in original). To this point, Nalco
pled that:
As sold and delivered to the Refined Coal LLCs or
operators of coalfired power plants using the
Chem-ModTM Solution, the proprietary additives
MerSorb and S-Sorb, which are specifically formu-
lated to be used with the Chem-ModTM Solution in
coal-fired power plants, have no substantial non-
infringing uses. When a coal-fired power plant or
a Refined Coal LLC receives MerSorb and S-Sorb
it purchased, the coal-fired power plant or Refined
Coal LLC has no other use for MerSorb and S-
Sorb except to use those additives in the Chem-
ModTM Solution.
Nalco 4AC, at 23. Nalco also alleges that the Chem-Mod
Solution Mixture has no substantial noninfringing uses.
Id. We must presume these allegations are true at the
pleading stage. To the extent Defendants dispute these
allegations, this is a factual inquiry not suitable for
resolution on a motion to dismiss.
For these reasons, we conclude Nalco has adequately
stated a claim for contributory infringement.
D. Willful Infringement
We address finally Nalco’s claim for willful infringe-
ment of the ’692 patent. The district court dismissed
Nalco’s willfulness allegations in its order dismissing the
3AC because it found Nalco failed to plead direct in-
fringement. Nalco 3AC Order, at *3. The district court
did not discuss these allegations when it dismissed the
4AC, however.
Nalco argues that, if we conclude that Nalco has ade-
quately pled direct infringement of the ’692 patent, we
should reverse the district court’s dismissal of the willful
infringement claim. Appellant Br. 60 n.20. Defendants
NALCO COMPANY v. CHEM-MOD, LLC 33
respond that direct infringement is a required predicate
for claims of willful infringement, and that Nalco has
failed to adequately plead its underlying claim. Appellee
Br. 46–47.
Because we conclude that Nalco has adequately stated
a direct infringement claim for at least some of the meth-
ods of infringement allegedly used by Defendants, we
reverse the district court’s dismissal of the willfulness
claim and reinstate Nalco’s willful infringement claim for
further proceedings. See 35 U.S.C. § 284.
III. CONCLUSION
For the foregoing reasons, we reverse the district
court’s dismissal of Nalco’s 4AC, except with respect to
the district court’s dismissal of Nalco’s allegations of
divided infringement for commercial applications, which
we do not disturb. The case is remanded for further
proceedings consistent with this opinion.
REVERSED AND REMANDED
COSTS
Costs to Nalco.