A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: willfulness

Divide
Crack on white concrete surface, Brina Blum, Unsplash

We've been following the district court cases holding that a complaint itself cannot establish knowledge of patent infringement sufficient to support a claim of indirect infringement or willfulness.

On Friday, Judge Hall jumped in, noting that judges in this district have taken views on this issue:

As many have acknowledged, courts—including courts within this district—disagree as to whether a pleading alleging post-suit inducement must allege that the defendant had the requisite knowledge prior to the filing of that particular pleading (or the lawsuit itself). I am also aware that there are courts—including in this district—that appear to hold that in the absence of pre-suit knowledge, a post-suit indirect infringement claim …

Nope
Daniel Herron, Unsplash

We've written about how Chief Judge Connolly has taken a stand on willfulness and indirect infringement allegations, ruling unambiguously that a lawsuit itself cannot be the basis for knowledge of infringement to support a claim of willfulness or inducement.

Today, he took it one step further, granting summary judgment of no willfulness even though plaintiff accused new products that were released after the complaint:

Boston Scientific's . . . argument is that summary judgment is precluded because "Nevro was put on notice of Boston Scientific's [#]933 and [#]193 Patents and its infringement of those patents at least as early as December 9, 2016, when Boston Scientific filed its 2016 Complaint," and "[r]ather than make any effort …

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 …

In a recent order, Judge Stark ruled that evidence of willfulness would come in during the liability phase of a jury trial in which liability and damages are being tried separately. The ruling was one of several issued in the lead up to the June jury trial in Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-LPS.

In his ruling, Judge Stark noted that "[t]he Court's interest in conservation of resources disfavors Defendants' request,"...

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 …

Robin Hood, taking on some rogue non-practicing entities
Robin Hood, taking on some rogue non-practicing entities Reginald Heade

Here is some colorful writing from Magistrate Judge Burke of the District of Delaware, recommending dismissal of a claim for willfulness that failed to plead knowledge, and which relied on—at most—possible knowledge for a 15-hour period between when the complaint was served on an unknown person and when the patent expired:

From the docket, it appears that someone who is in some way affiliated with [defendant] Robinhood was served with the FAC at 9:08 a.m. on July 30, 2019. . . . But, as it turns out, the '633 patent expired on July 30, 2019—that same day. The Court guesses that, in light of all of this, it might be theoretically possible for Plaintiff to pursue what would have to go down as the most de minimis claim of willful infringement in this Court’s history. But whether such a claim—revolving around whether Robinhood knew of the patent and its infringement thereof, during a roughly 15-hour time period on July 30, 2019—would even be plausible would depend on exactly who got served with the Complaint on July 30, 2019 and what their relationship with Robinhood is. Yet the record provides little information on that front. Thus, in the Court’s view, the best course is to grant Robinhood’s Motion as to willful infringement, and if Plaintiff believes it can (and should) pursue such a claim here, then in a further amended pleading, it can attempt to set out the factual basis for such a claim.

But that's not all ...

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.

Dollar Bills
Sharon McCutcheon, Unsplash

Chief Judge Stark today released his opinion on post-trial motions in Roch Diagnostics Co. v. Meso Scale Diagnostics, LLC, C.A. No. 17-189-LPS (D. Del.), following a jury trial last year that resulted in a $137m verdict and a finding of willfulness.

Damages Award on 65% Royalty Theory Confirmed

The Court denied a post-trial motion to undo the jury's damage finding, which equated to an approximately 65% royalty rate (or more, depending on the royalty base).

Interestingly, the jury awarded damages after a one-sided royalty rate presentation by Roche, the accused infringer. The Court had previously excluded the patentee's damages expert's opinion as to the royalty rate, because it used the wrong date …

Judge Stark recently adopted Judge Burke's recommendation that the Court deny a motion for summary judgment of no willful infringement, despite the defendant's objection that the key piece of authority underlying Judge Burke's decision issued after the summary judgment motion was filed. Judge Stark also pushed the November jury trial, but possibly by just a few weeks.