A Blog About Intellectual Property Litigation and the District of Delaware


We have another entry in the ongoing saga of the adequacy of post-complaint knowledge for indirect and willful infringement.

Judge Andrews started his analysis by acknowledging his own conflicting decisions, noting that "I have certainly done my share to contribute to the disagreement, having been on both sides of the issue."

He ultimately concluded that:

  1. "[T]he plaintiff should be allowed to amend a complaint to allege knowledge since the filing of the original complaint."
  2. "In the usual case, if the plaintiff's original complaint were dismissed for failure to plead pre-suit knowledge [for indirect infringement], then the plaintiff's amended complaint would require only one additional paragraph in order to allege knowledge since the filing of the original complaint."
  3. "I will, in the usual case, grant motions to dismiss [willfulness allegations] that are entirely based on post-suit conduct."

He also noted, however, that the conflicting authority in D. Del. has been compounded by the common practice of referring 12(b)(6) motions to magistrate judges:

Compounding the consequences of the disagreement, motions to dismiss are often referred to Magistrate Judges, so they are put in the unenviable position of either issuing inconsistent rulings depending upon which district judge made the referral or issuing consistent rulings that will be difficult for some of the district judges to sustain when there are objections. The state of the law encourages accused infringers to waste resources and time filing motions to dismiss that usually have no lasting impact on the case. And it does not seem like the issue is one that is likely to reach the Court of Appeals, so the issue is going to continue to percolate without reaching a boil.

Going forward, his solution is simple:

I am going to solve the Magistrate Judge referral concern by no longer referring the Rule 12(b)(6) pleading motions (as distinguished from the § 101 motions to dismiss) to Magistrate Judges.

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