A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: indirect-infringement

Stop Sign
Luke van Zyl, Unsplash

Back in March, we noted Judge Connolly's adoption of a bright-line rule regarding reliance on post-complaint knowledge for indirect and willful infringement allegations:

[I]n the absence of binding authority to the contrary from the Federal Circuit and Supreme Court, I will adopt the rule that the operative complaint in a lawsuit fails to state a claim for indirect patent infringement where the defendant's alleged knowledge of the asserted patents is based solely on the content of that complaint or a prior version of the complaint filed in the same lawsuit. And I conclude that the operative complaint in a lawsuit fails to state a claim for willfulness-based enhanced damages under § 284 where the …

Hammock
Mohamed Ajufaan, Unsplash

The most interesting part of a judicial decision is often found in the footnotes.

Case in point: yesterday, Magistrate Judge Burke issued an R&R on a motion to dismiss, recommending dismissal with prejudice of the patentee's contributory infringement claims (but otherwise recommending that the motion be denied).

For the most part, the R&R presents a fairly standard analysis of induced, contributory, and willful infringement claims. But it also contains several interesting footnotes, including a stern word of caution on sloppy pleadings:

As Tonal notes, . . . ICON gets off to a poor start here, since in its counterclaims, ICON did not even bother to state whether it is alleging induced infringement, contributory infringement, or both. …

As we pointed out last July, Judge Connolly has publicly questioned (several times) whether post-complaint knowledge is enough to state a claim for willfulness or indirect infringement. Today, he answered that question with a resounding no.

In nearly two full pages of footnotes, Judge Connolly collected the conflicting authority across the nation—and within the district—on whether an infringement complaint, by itself, is enough to support the knowledge element of willful and indirect infringement claims.

He went on to explain his own views:

ZapFraud has identified, and I know of, no area of tort law other than patent infringement where courts have allowed a plaintiff to prove an element of a legal claim with evidence that the plaintiff filed …

Judge Andrews just issued some tough guidance for parties thinking about filing R&R objections in D. Del.

The entire order is worth a read, but the most interesting tidbit is in the first footnote. Magistrate Judge Burke issued an R&R on a motion to dismiss, where he recommended dismissing the plaintiff's indirect infringement claims (without prejudice) and denying the defendant's § 101 motion.

Judge Andrews wasted no time overruling the plaintiff's objection to the dismissal of its indirect infringement claims, noting that:

Plaintiff’s argument has no impact on this case; Defendant wisely did not waste paper filing a response.

Although Judge Andrews spent more time discussing the defendant's objections, he quickly dispatched several arguments that were raised only …

Illustration of plaintiff's willfulness allegations
Illustration of plaintiff's willfulness allegations Head Of A Skeleton With A Burning Cigarette, Vincent van Gogh

Judge Andrews, in granting a motion to dismiss a patentee's willfulness allegations:

The allegations could charitably be described as bare-bones. There is nothing to suggest any pre-suit knowledge of the two asserted patents. Thus, Plaintiff’s position is that failure of the Defendant to concede after a suit is filed automatically converts a non-willfulness case into a willfulness case. I disagree. Thus, I will grant the motion as to willfulness.

In the same short order, he set out his view on the difference in pleading standards between willfulness and indirect infringement:

As to indirect infringement, I think the allegations make out a case for post-December 2014 indirect infringement. (I do not think Plaintiff is arguing that there was any pre-December 2014 indirect infringement, and, in any event, there are no allegations that would provide any basis for such a theory.). I do not think the requirements in regard to state of mind for indirect infringement are as great as they are for willfulness. Thus, I will deny the motion as to indirect infringement.