Walker Digital, LLC v. Facebook, Inc.
852 F. Supp. 2d 559
D. Del.2012Background
- Walker Digital filed patent infringement against Fandango, Expedia, Amazon, and Zappos; amended complaint alleges infringement of the '470 and '056 patents.
- Plaintiff owns the patents; the '470 issued Nov. 9, 2010 and the '056 issued Nov. 2, 2010.
- Amazon and Zappos moved to dismiss under Rule 12(b)(6) for failure to state a claim; motion seeks dismissal of indirect and willful claims as well as direct infringement.
- Court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a); the court will address whether the amended complaint sufficiently states direct, indirect, and willful infringement.
- Court declines to dismiss direct infringement at this stage as claim construction is premature and Form 18 pleading suffices for notice; discovery may inform construction.
- Willful and contributory infringement claims are analyzed against standards from Seagate and Aro Mfg.; court concludes the amended complaint plausibly pleads willfulness and contributory infringement as to both Amazon and Zappos.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Direct infringement sufficiency at this stage | Walker Digital pleads ownership, patent numbers, accused products, and relief. | Promotions do not meet the 'unless and until' limitation; lack of claim construction. | Premature to dismiss; direct infringement pled with adequate notice; claim construction deferred. |
| Inducement of infringement standard | Knowledge and intent alleged; pre-suit awareness shown. | Inducement requires more than knowledge; not sufficiently pled. | Allegations pass Rule 8 and Global-Tech; inducement claim survives against Amazon and Zappos. |
| Contributory infringement standard | Allegations show knowledge, sale of infringing components, lack of substantial noninfringing use. | Need stronger showings of knowledge and intent. | Pleadings facially plausible; contributory infringement survives for Amazon and Zappos. |
| Willful infringement standard | Pre-suit knowledge via meetings and communications; objective risk shown. | Prior decisions require more concrete showing of willfulness. | Willfulness pled via pre-suit knowledge; court denies dismissal of willful claims. |
Key Cases Cited
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 766 (U.S. 2011) (knowledge plus culpable conduct required for inducement; ultimate infringement must be shown)
- DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) (intent required for induced infringement beyond knowledge)
- Seagate Tech. LLC v. Cisco Sys., Inc., 497 F.3d 1360 (Fed. Cir. 2007) (two-pronged willfulness standard: objective risk and subjective knowledge)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (U.S. 1964) (knowledge of patent and infringing use required for contributory infringement)
- McZeal v. Sprint Nextel Corp., 501 F.3d 1352 (Fed. Cir. 2007) (Form 18 adequate for direct infringement pleading at patent filing)