897 F. Supp. 2d 225
D. Del.2012Background
- This is a patent infringement action by MONEC Holding AG asserting infringement of the reexamined '678 patent.
- Defendants include Motorola Mobility, Samsung entities, and HTC entities, moving to dismiss the first amended complaint under Rule 12(b)(6).
- Magistrate Judge Fallon recommended denying indirect infringement and willfulness, but granting dismissal of claims for induced, contributory, and willful infringement as to the reexamined patent.
- The court adopts the R&R, denying the original complaint as moot and dismissing MO-NEC’s claims in the first amended complaint without prejudice.
- The issue centers on whether the first amended complaint plausibly alleges indirect infringement and willful infringement under Twombly/Iqbal standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Pleading indirect infringement requires knowledge of the patent and intent | MONEC contends knowledge or willful blindness can be inferred from competitors’ litigation activity | Defendants argue pre-suit knowledge of a related patent and market competition are insufficient | Pleading insufficient; dismiss based on lack of actual knowledge and intent |
| Whether willful infringement is pled with objective recklessness | Willfulness shown by pre-suit knowledge and awareness of infringement risk | Willfulness not adequately pled; lacks objective recklessness facts | |
| Knowledge of the reexamined patent can be inferred from public disclosures or competitor actions | Public disclosure and monitoring of competitors’ litigation support knowledge | Public disclosures and competitor actions do not establish knowledge of the reexamined patent | Not plausibly inferred; knowledge not adequately pled |
| Applicability of post-litigation conduct limitation on indirect infringement claims | Apeldyn/Walker Digital allow limiting to post-litigation conduct | Distinguish cases; this matter requires pre-suit knowledge to plead indirect infringement | Pre-suit knowledge not sufficiently pled; indirect infringement dismissed without prejudice |
Key Cases Cited
- Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (U.S. 2011) (willful blindness standard; knowledge can be shown by deliberate actions to avoid learning a fact)
- Twombly; Iqbal, 550 U.S. 544; 129 S. Ct. 1937 (U.S. 2007; 2009) (pleading standards requiring plausible claims)
- Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263 (Fed. Cir. 2004) (establishes knowledge prerequisite for indirect infringement)
- Mallinckrodt Inc. v. E-Z-EM, Inc., 670 F. Supp. 2d 349 (D. Del. 2009) (indirect infringement requires knowledge and intent)
- EON Corp. IP Holdings LLC v. FLO TV Inc., 802 F. Supp. 2d 527 (D. Del. 2011) (pleading knowledge of patents prior art not easily inferred from market activity)
- Apeldyn Corp. v. Sony Corp., 852 F. Supp. 2d 568 (D. Del. 2012) (limits indirect infringement to post-litigation conduct if pre-suit knowledge is not alleged)
- Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559 (D. Del. 2012) (discusses post-litigation conduct and knowledge)
- St. Clair Intellectual Prop. Consultants, Inc. v. Hewlett-Packard Co., 2012 WL 1134318 (D. Del. 2012) (pleading willful infringement requires objective recklessness)
- In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (standard for willful infringement)