Last week, while I was wrapping presents with all the care and skill of a subway sandwich artisan, Judge McCalla weighed in on the issue of whether a complaint can establish knowledge for the purpose of willfulness, dealing with a novel argument in the process.
To begin, he sided with Chief Judge Connolly and Judge Williams, holding that the complaint cannot establish knowledge for the purpose of a claim of willful infringement:
In other words, post-suit knowledge alone is insufficient to sustain a claim for willfulness even at the motion to dismiss stage
Aortic Innovations, LLC v. Edwards Lifesciences Corp., C.A. No. 23-158, D.I. 50 at 6 (D. Del. Dec. 8, 2023).
The new wrinkle is that this suit (called "Aortic II" in the opinion), dealt with a bunch of patents that were all continuations of patents that Aortic had asserted again Edwards last year ("Aortic I," obviously). The complaint in Aortic II plausibly alleged that Edwards had knowledge of the new patents before Aortic II, but not before service of the complaint in Aortic I.
In a clever move, Edwards moved to dismiss the willfulness allegations in Aortic II, because the suit was really just a "continuation" or "extension" of Aortic I because:
(1) Asserted Patents are in the same family; (2) Asserted Patents share the same specification; (3) Litigation counsel are the same; and (4) Accused Products are the same.
Id. at 6-7.
Accordingly, they argued that Aortic needed to show knowledge of the patents before the filing of Aortic I.
Clever though the gambit may have been, Judge McCalla denied the motion to dismiss:
The premise that two separate litigations could be continuations of each other because they involve patents that are continuations of each other, or because litigation counsel and accused products are the same, has no merit. Such a ruling would lead to absurd results, preventing plaintiffs from adequately protecting their property rights and failing to deter wrongful actors from willful infringement, simply because an earlier patent in the same family was previously litigated. Edwards fails to provide the Court with a measurable means of determining when such a chain tying separate litigations together could be broken. Would a continuation filed four, five, or six patents apart be enough? There is insufficient reason to treat these litigations as one and thus require pre-suit knowledge to precede the filing of the complaint in Aortic I.
Id. at 9.
It was a good try anyway.
(Eds. note - I'd intended to do the follow-up I teased in my post last week, but at the end of the day there just wasn't enough meat there for a whole post. This is usually what happens when I leave you hanging. Also, I sometimes just forget.)
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
