MEMORANDUM OPINION
I. INTRODUCTION
On March 20, 2013, plaintiffs Intellectual Ventures I, LLC (“IV I”) and Intellectual Ventures II, LLC (“IV II”) (collectively, “plaintiffs”) filed suit in this district against defendants Toshiba Corporation (“Toshiba Corp.”), Toshiba America, Inc. (“TAI”), Toshiba America Electronic Components, Inc. (“TAEC”), and Toshiba America Information Systems, Inc. (“TAIS”) (collectively, “defendants”) alleging infringement of ten patents: U.S. Patent Nos. 5,500,819 (“the '819 patent”), 5,568,431 (“the '431 patent”), 5,600,606 (“the '606 patent”), 5,687,132 (“the '132 patent”), 5,701,270 (“the '270 patent”), 5,829,016 (“the '016 patent”), 6,058,045 (“the '045 patent”), 5,938,742 (“the '742 patent”), 7,836,371 (“the '371 patent”), and 6,618,788 (“the '788 patent”) (collectively, “the asserted patents”). (D.I. 1)
IV I and IV II are limited liability companies organized and existing under the
Presently before the court are defendants’ motions: (1) to dismiss plaintiffs’ claims of joint infringement and willful inflingement or, in the alternative, for a more definite statement (D.I. 12); and (2) to sever the claims asserted by IV I from those asserted by IV II. (D.I. 28) The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
II. STANDARD OF REVIEW
In reviewing a motion to dismiss filed under Fed. R. Civ. P. 12(b)(6), the court must accept the factual allegations of the non-moving party as true and draw all reasonable inferences in its favor. See Erickson v. Pardus,
At the pleading stage in a patent case, the information required by Form 18 has been deemed adequate notice to pass muster under Rule 8. See McZeal v. Sprint Nextel Corp.,
III. ANALYSIS
Defendants move to dismiss plaintiffs’ claims of joint and willful infringement.
A. Joint Infringement
Defendants contend that plaintiffs have not- sufficiently pled a theory of joint infringement “where one party performs some steps of a patent method claim while another party performs other steps in the method claim.” (D.I. 13 at 1-2, 6-9) Plaintiffs respond that their complaint does not plead such a theory, but instead “asserts infringement claims against each Toshiba joint tortfeasor, including the Toshiba corporate parent and its agent subsidiaries that it controls to carry out the infringement of Intellectual Ventures’ patents— consistent with the long-standing principle that a controlling corporate parent is jointly liable for the infringing acts of its agent subsidiaries.” (D.I. 22 at 1) As plaintiffs have clarified that “the complaint does not purport to rely” on the theory raised by defendants, the court only considers whether joint liability based on an agency relationship has been sufficiently pled.
1. Standard
A parent corporation that directs the allegedly infringing activity of a subsidiary can be liable for its subsidiary’s infringement. Ethypharm S.A. France v. Bentley Pharms., Inc.,
2. Discussion
Plaintiffs assert that all or some of the named defendant corporate entities acted jointly to infringe the asserted patents. (D.I. 22 at 9) In this regard, the complaint recites:
Toshiba Corp., TAI, TAEC, and TAIS acted jointly and collectively to make, use, sell, offer for sale, and/or import products that infringe patents owned by Intellectual Ventures I and Intellectual Ventures II, including without limitation, flash memory products, USB host controller products, microcontroller products, and/or hard drive products, either directly or indirectly through their subsidiaries or affiliates, to customers throughout the United States, including in this district. Toshiba Corp., TAI, TAEC, and TAIS are referred to collectively herein as “Toshiba.”
(D.I. 1 at ¶ 8) Plaintiffs aver that “the complaint properly brought claims against all joint tortfeasors in this action — the Toshiba corporate parent and its agent subsidiaries that it controls to carry out the infringement of Intellectual Ventures’ patents.” (D.I. 22 at 9) Specifically, plaintiffs assert that “Toshiba Corp. operates in the United States through its holding company TAI and various operating companies such as TAEC and TAIS, with a combined total of approximately 8,000 employees in the United States.” (Id. at ¶ 7; see also id. at ¶¶ 3-6, 12) The complaint further alleges that “TAI is a holding company for Toshiba Corp. and is controlled by and/or acts as an agent of Toshiba Corp.” (Id. at ¶ 4)
The court must take plaintiffs’ factual allegations as true, especially where, as here, the information resides with defendants who, in turn, have provided only a general denial of infringement rather than facts about the organization and relationships between the various defendant entities. (See D.I. 25 at 5) See, e.g., Tarkus Imaging, Inc. v. Adobe Sys., Inc., Civ. No. 10-63,
B. Willful Infringement
1. Standard
The Federal Circuit has set forth a two-pronged standard for establishing willfull infringement, an objective prong and a subjective prong. With respect to the former,
a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. The state of mind of the accused infringer is not relevant to this objective inquiry.
In re Seagate Technology LLC,
At the pleading stage, a plaintiff alleging a cause of action for willful infringement must “plead facts giving rise to at least a showing of objective recklessness of the infringement risk.” St. Clair Intellectual Prop. Consultants, Inc. v. Hewlett-Packard Co.,
2. Discussion
Plaintiffs argue that defendants’ infringement was willful because defendants “had pre-suit knowledge and notice of each of the [asserted patents] and [defendants’] infringement thereof, through discussions with and presentations from [plaintiffs] and an infringement notice letter....” (D.I. 22 at 7) The complaint includes general allegations that there were “discussions with Intellectual Ventures on or about September 7, 2010, a presentation provided by Intellectual Ventures to Toshiba on or about June 30, 2011,
Plaintiffs cite three cases where pleadings of willful infringement were sufficient to withstand a motion to dismiss. Accord, Walker Digital, LLC v. Facebook, Inc.,
Where, as here, all the information relating to notice is in the hands of plaintiffs
IV. CONCLUSION
For the above reasons, defendants’ motion to dismiss (D.I. 12) is granted with respect to the claims of willful infringement and denied with respect to the claims of joint infringement.
ORDER
At Wilmington this 3rd day of September, 2014, consistent with the memorandum opinion issued this same date;
IT IS ORDERED that:
1. Defendants’ motion to dismiss (D.I. 12) is denied with respect to joint infringe
2.Defendants’ motion to sever (D.I. 28) is denied.
Notes
. This court has previously held that a plaintiff must "specify, at a minimum, a general class of products or a general identification of the alleged infringing methods.” Eidos Communications, LLC v. Skype Technologies SA,
. The court determined that,- of the several defendants, one defendant had the requisite pre-suit knowledge having had discussions with plaintiff's representatives before the original complaint was filed that "focused on ‘[defendant’s] infringement of the patented subject matter.’ ” Walker Digital, LLC v. Facebook, Inc.,
. ”[P]laintiff dedicate[d] several paragraphs toward allegations that [defendant's] predecessor [] learned of plaintiffs’ technology" early on, "knew such information was confidential,” and had knowledge of proprietary information "pursuant to a materials license agreement.” Xpoint Technologies, Inc. v. Microsoft Corp.,
. This court ”decline[d] to require more detail with respect to plaintiffs’ willful infringement claims than is required by Form 18,” noting that plaintiffs’ answering brief contained additional detail, which could have been provided in the original complaint or in an amended complaint, sufficient to withstand a motion to dismiss. S.O.I.TEC Silicon On Insulator Techs., S.A. v. MEMC Elec. Materials, Inc., Civ. No. 08-292,
. Unlike the facts to support an agency relationship between defendants.
. The court denies defendants’ alternate motion for a more definite statement as moot. (D.I. 12) Defendants' motion to sever is also denied. (D.I. 28) The court’s case management regime is meant to disl cern which patents will move forward to trial after coordinated discovery and motion practice procedures. The court notes that, in any event, under its new scheduling order, generally no more than two patents may be tried to a jury at one time. The court, therefore, will address this issue in due course.