Where a patentee asserts indirect and/or willful infringement claims in its complaint, but does not allege facts showing pre-suit knowledge or intent with respect to the asserted patent(s), the following question arises: Can the complaint provide knowledge of the patents-in-suit sufficient to support claims for post-suit indirect/willful infringement? It turns out the answer to that question is both yes and no, as Judge Burke explained in a September 22 Report and Recommendation in ZapFraud, Inc. v. Barracuda Networks, Inc., 19-1687-CFC-CJB.
Some background: In its original and first amended complaints, Zapfraud had asserted direct, indirect, and willful infringement of just one patent - the '628 patent. It later filed a second amended complaint asserting direct, indirect, and willful infringement of the '628 patent and a second patent - the '073 patent. The defendant moved to dismiss the SAC.
In analyzing the defendant's motion, Judge Burke concluded that the post-suit indirect and willful infringement claims in the SAC could stand for the '628 patent but could not stand for the '073 patent. As Judge Burke put it, in his ruling on the '073 patent:
[A] party cannot plausibly claim in a complaint that its adversary had knowledge of infringement of the patent-in-suit (required for both induced and contributory infringement claims) or had the specific intent to encourage another’s infringement (required for an induced infringement claim) when, prior to the very moment that this complaint was filed, its adversary had never actually: (1) been aware of the patent’s existence; (2) known that the patent was being infringed; or (3) intended that anyone infringe the patent. A plaintiff’s claim of indirect infringement in such circumstances sounds to the Court like a hypothetical assertion about what might or might not happen in the future, not a plausible claim about what in fact has already happened.
Conversely, where both the original and first amended complaints provided notice of the '628 patent, claims for "post-suit" (i.e., post-original-complaint) indirect and willful infringement of the '628 patent in the SAC could stand:
[I]t is at least plausible that since [the date of the original complaint], Defendant knew that at least claim 1 of the '628 patent was being infringed, and that it also knew exactly how this was occurring.
[I]f the original Complaint gave Defendant notice of the patent and notice of its infringement, the Court does not see why an amended complaint cannot plausibly allege that since the filing of that original Complaint, Defendant has been willfully infringing the patent by continuing to market and sell its allegedly infringing products.
Of course, the Court was considering the motion to dismiss well after the SAC was filed, and there could be no dispute that the defendant had knowledge of both patents when the Court rendered its decision, but the plausibility of claims is evaluated as of the time of filing of the relevant pleading, and thus Judge Burke ruled that only the claims related to the '628 patent should survive.
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