Availability of Willfulness and/or Indirect Patent Infringement Claims without Pre-Suit Knowledge: A District Court Survey
Posted in Patents
Introduction
The tests for willful and indirect (both inducement and contributory) patent infringement require a finding by the court that the alleged infringer had prior knowledge of infringement of the at-issue patent.[1] In many litigations, a patent-owner plaintiff will allege willful and/or indirect patent infringement against an accused defendant without having provided the accused defendant with pre-suit knowledge of infringement (e.g., a cease-and-desist letter).
Some district court judges will allow the patent infringement complaint itself to satisfy the required “knowledge” for the respective test. However, other district court judges require that knowledge be provided prior to the filing of the lawsuit for the claim to proceed. Our team surveyed the eight most active patent litigation districts and found an interesting split between districts as well as some intradistrict splits among judges in the same district.
This blog explores the split among districts and judges by providing (1) an overview chart illustrating how different current and former judges within the most popular venues rule on the issue and (2) a detailed chart outlining the numerous opinions that informed the making of the summary chart.
Quick takeaway: Of the eight most active district courts surveyed, five districts (EDTX, WDTX, NDIL, NDTX and SDCA) allow the complaint to satisfy the knowledge requirement, while judges in the other three districts (DDEL, CDCA and NDCA) are split on the issue.
Overview Chart[2]
| Court | Judge | Post-Suit Knowledge Satisfied by Complaint |
|---|---|---|
| Texas, E.D. | J. Boone Baxter | YES |
| Texas, E.D. | Leonard Davis | YES |
| Texas, E.D. | Rodney Gilstrap | YES |
| Texas, E.D. | Roy S. Payne | YES |
| Texas, W.D. | Alan D. Albright | YES |
| Texas, W.D. | Susan Hightower | YES |
| District of Delaware | Richard G. Andrews | YES |
| District of Delaware | Colm F. Connolly | NO |
| District of Delaware | Jennifer L. Hall | YES |
| District of Delaware | Maryellen Noreika | YES |
| District of Delaware | Leonard P. Stark* | YES |
| District of Delaware | Gregory B. Williams | NO |
| Illinois, N.D. | Matthew F. Kennelly | YES |
| Illinois, N.D. | Rebecca R. Pallmeyer | YES |
| California, C.D. | Andre Birotte Jr. | NO |
| California, C.D. | David O. Carter | YES |
| California, C.D. | Philip S. Gutierrez** | YES |
| California, C.D. | R. Gary Klausner | NO |
| California, C.D. | Christina A. Snyder | NO |
| California, N.D. | William Alsup | NO |
| California, N.D. | Beth Labson Freeman | NO |
| California, N.D. | Haywood S. Gilliam Jr. | YES |
| California, N.D. | Susan Illston | YES |
| Texas, N.D. | Barbara M.G. Lynn | YES |
| California, S.D. | Marilyn L. Huff | YES |
Detailed Chart
| Court | Judge | Post-Suit Knowledge Satisfied by Complaint | Relevant Language |
|---|---|---|---|
| Texas, E.D. | J. Boone Baxter | YES | “Regarding Defendants’ knowledge of the ’962 Patent, the complaint alleges that ‘TCL has knowledge of the ’962 Patent and its indirect infringement since at least the filing of this lawsuit when TCL was notified of the Asserted Patents and its infringement.’ Such a statement is ‘a sufficient basis to allege the knowledge and intent necessary to sustain allegations of indirect infringement.’ Accordingly, Plaintiff has adequately stated a claim for induced infringement as to the ’962 Patent.”[3] |
| Texas, E.D. | Leonard Davis | YES | “Because Plaintiff’s claims against Dell allege knowledge of the patents as of the date of service of the Original Complaint, Plaintiff has adequately pleaded the knowledge requirement.”[4] |
| Texas, E.D. | Rodney Gilstrap | YES | “The Complaint therefore provides Defendants the requisite notice of the Asserted Patents to support a claim of indirect infringement at least as of the time the Complaint was filed.”[5] |
| Texas, E.D. | Roy S. Payne | YES | “Alacritech cites to a number of cases from this District where judges declined to dismiss indirect infringement claims where the plaintiff alleged knowledge of the asserted patents based on service of the complaint, even with respect to pre-suit infringement. CenturyLink does not cite to any controlling authority persuading the Court to depart from the reasoning of these cases. Accordingly, this part of CenturyLink’s Motion should be denied.”[6] |
| Texas, W.D. | Alan D. Albright | YES | “Serving a complaint will, in most circumstances, notify the defendant of the asserted patent and the accused conduct … and sufficiently plead a post-filing/post-suit willful infringement claim.”[7] |
| Texas, W.D. | Susan Hightower | YES | “While acknowledging that courts have reached different conclusions on this issue, the Court finds that UCT has the better part of this argument. Over the past two years, in the opinions cited above, courts in the Western District of Texas and elsewhere have permitted post-suit indirect infringement claims pleading knowledge arising from the complaint to survive motions to dismiss.”[8] |
| District of Delaware | Richard G. Andrews | YES | “I take the position that [Plaintiff] is permitted to allege a post-suit indirect infringement claim based on knowledge from the original complaint.”[9] |
| District of Delaware | Colm F. Connolly | NO | “Though not without doubts, I am ‘not persuaded by Plaintiff[’s] contention that the requisite knowledge can be established by the filing of the Plaintiff[’s] Complaint.’”[10] |
| District of Delaware | Jennifer L. Hall | YES | “The parties in this case agree that there is currently no binding authority from the Federal Circuit or the Supreme Court on this point. I have read and considered the lines of cases, and I don’t have anything to add to the discourse that has not already been said. Ultimately, I am persuaded by the reasoning of Judge William C. Bryson, sitting by designation in this district, in IOENGINE. In that case, Judge Bryson concluded that there is no requirement that a plaintiff plead pre-suit knowledge for claims of post-suit indirect infringement to survive a motion to dismiss.”[11] |
| District of Delaware | Maryellen Noreika | YES | “Given that the First Amended Complaint provided Defendants with knowledge of the Patents-in-Suit and also with knowledge of the purported infringement caused by using the accused products in conjunction with certain applications, one plausible inference for Defendants’ continued marketing of those products and applications is that Defendants specifically intend to induce their customers to infringe the Patents-in-Suit. Indeed, other courts in this District have reached similar conclusions, finding a specific intent to induce to be sufficiently pleaded where a plaintiff alleges that the defendant continues marketing the accused products despite receiving notice of an asserted patent and its purported infringement from an earlier pleading.”[12] |
| District of Delaware | Leonard P. Stark | YES | “‘[T]here is no meaningful difference’ between relying on an original complaint and relying on a notice letter sent on the same day of the complaint to establish the knowledge element for induced and willful infringement claims alleged in an amended complaint.”[13] |
| District of Delaware | Gregory B. Williams | NO | “This Court adopts the view that ‘[t]he complaint itself cannot serve as the basis for a defendant’s actionable knowledge’ for a willful infringement claim.”[14] |
| Illinois, N.D. | Matthew F. Kennelly | YES | “In the absence of Federal Circuit guidance, this Court has concluded that the complaint can provide the required knowledge for a post-suit willful infringement claim.”[15] |
| Illinois, N.D. | Rebecca R. Pallmeyer | YES | “Therefore, Defendants’ knowledge of the patent as of the time of the suit’s commencement can satisfy the knowledge requirement for conduct that post-dates the date of the complaint.”[16] |
| California, C.D. | Andre Birotte Jr. | NO | “This Court agrees with other courts in this District, and nationwide, that claims for willful and induced infringement generally fail without allegations of pre-suit knowledge of the asserted patents. First, willfulness and inducement both require that the plaintiff allege that the defendant knew its acts were infringing.”[17] |
| California, C.D. | David O. Carter | YES | “[T]he Court sees no reason to require plaintiffs to plead pre-suit knowledge in asserting post-suit indirect infringement claims. Service of a complaint is not legally insufficient to support allegations that, after receiving the complaint, the receiving party is aware of the patent and alleged infringement.”[18] |
| California, C.D. | Philip S. Gutierrez | YES | Finding that Plaintiff had “sufficiently pleaded Defendant’s knowledge” by alleging that “Defendant [knew] about the [patent] … since at least the service of [the] complaint.”[19] |
| California, C.D. | R. Gary Klausner | NO | “[A] plaintiff must allege in an original complaint that the alleged inducer had knowledge of the patent-in-suit prior to filing,” as “[t]he purpose of a complaint is to obtain relief from an existing claim and not to create a claim.”[20] |
| California, C.D. | Christina A. Snyder | NO | “To establish willfulness, pre-suit notice of the patent and infringement of that patent is required.”[21] |
| California, N.D. | William Alsup | NO | “This means that without a notice letter or circumstances like the examples described previously, the complaint will generally not be adequate to serve as notice for either willful or indirect infringement.”[22] |
| California, N.D. | Beth Labson Freeman | NO | “On this, the Court agrees with Intel. ‘The purpose of a complaint is to obtain relief from an existing claim and not to create a claim.’ ZapFraud, 528 F. Supp. 3d at 251; Sonos, 591 F. Supp. 3d at 648. Furthermore, because a complaint and infringement contentions are a necessary part of patent litigation, a finding that they alone satisfy post-suit notice would invite claims of willful infringement and indirect infringement into literally every patent suit. The Court has found that VLSI’s only evidence of pre-suit infringement was knowledge of the ’836 Patent, and VLSI’s only evidence of post-suit notice is its complaint and infringement contentions. Thus, VLSI’s evidence does not create a genuine dispute of material fact that would preclude summary judgment of no willful or indirect infringement. The Court finds as a matter of law that VLSI cannot prove post-suit willful or indirect infringement of the Asserted Patents by Intel. Thus, Intel’s Motion for Summary Judgment of no post-suit willful or indirect infringement is granted.”[23] |
| California, N.D. | Haywood S. Gilliam Jr. | YES | “The substantial weight of authority in this District allows a patentee to bring a claim of post-suit infringement on the basis that the alleged infringer received notice of the patent, and therefore had knowledge of it, at least as early as service of the complaint. … The Court will follow the reasoning of the majority view.”[24] |
| California, N.D. | Susan Illston | YES | “[K]nowledge of the patent based on the filing of a complaint is sufficient to meet the knowledge requirement for an induced infringement claim.”[25] |
| Texas, N.D. | Barbara M.G. Lynn | YES | “Thus, the allegations in the Amended Complaints—that Verizon continued to induce uses it had learned from the Original Complaint infringed Plaintiff[‘]s patents—satisfy the knowledge requirement of an induced infringement claim.”[26] |
| California, S.D. | Marilyn L. Huff | YES | “In sum, Plaintiffs have adequately alleged that Defendants had pre-suit knowledge of the asserted patents and that Defendants have deliberately and willfully infringed the asserted patents. The operative complaint adequately puts Defendants on notice of the requested relief, which some courts characterize as claims for willful infringement.”[27] |
[1] See 35 U.S.C. § 271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”); Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011) (“Accordingly, we now hold that induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.”).
[2] The courts identified in this document represent 77.2 percent of all patent litigation cases heard by district courts in 2023.
* Judge Stark served as judge for the District of Delaware from 2010 to 2014 and as chief judge from 2014 to 2021. Stark now serves as a circuit judge for the U.S. Court of Appeals for the Federal Circuit, having received commission on March 16, 2022.
** Effective March 30, 2024, Judge Gutierrez ended his tenure as chief judge for the U.S. District Court for the Central District of California, having served since June 26, 2020. Gutierrez now serves as a district judge in the Western Division of Los Angeles.
[3] Monument Peak Ventures, LLC v. TCL Elecs. Holdings Ltd., No. 5:24cv11-RWS-JBB, 2024 BL 250643, at *9 (E.D. Tex. June 11, 2024) (internal citations omitted).
[4] Cellular Commc’ns Equip. LLC v. HTC Corp., No. 6:13-cv-507, 2015 U.S. Dist. LEXIS 179461, at *26 (E.D. Tex. Mar. 27, 2015).
[5] BillJCo v. Cisco Sys., No. 2:21-CV-00181-JRG, 2021 U.S. Dist. LEXIS 251455, at *18 (E.D. Tex. Nov. 30, 2021); see also RightQuestion, LLC v. Samsung Elecs. Co., No. 2:21-CV-00238-JRG, 2022 U.S. Dist. LEXIS 29932, at *6 (E.D. Tex. Feb. 18, 2022) (“The Court disagrees with Samsung that it is ‘well-settled’ that the Complaint is insufficient to support induced infringement at the pleadings stage” and that “the Court has expressly held that it is ‘premature at this early stage in the proceedings to distinguish between pre-suit and post-filing conduct for the purposes of induced infringement’ where it is clear that ‘Defendants had knowledge of the Asserted Patents for at least some time during the infringement period.’”); Apex Beam Techs. LLC v. TCT Mobile Int’l Ltd., No. 2:21-CV-00438-JRG, 2024 U.S. Dist. LEXIS 1020, at *14-15 (E.D. Tex. Jan. 3, 2024) (“The Court first addresses Defendants’ claim that [s]ince the FAC does not even allege that Plaintiff provided notice of infringement to any of the TCL Defendants before Plaintiff filed its original Complaint ... the FAC fails to plausibly plead pre-suit indirect infringement by any of the TCL Defendants. Such is not the law. The Federal Circuit’s decision in Arctic Cat—relied upon by Defendants for the assertion that ‘[i]t is ... well-settled that notice of the allegedly infringed patent(s) and the act(s) of alleged infringement must come from the patent owner to be effective’—relates to ‘notice’ in the context of 35 U.S.C. § 287(a), not to the knowledge requirement for indirect infringement. No such patentee-based notice requirement exists for claims of indirect infringement, and this Court declines to impose such a requirement now.”).
[6] Alacritech Inc. v. Centurylink, Inc., No. 2:16-CV-00693-RWS-RSP, 2017 U.S. Dist. LEXIS 155687, at *9 (E.D. Tex. Sept. 4, 2017); see also Mojo Mobility, Inc. v. Samsung Elecs. Co., No. 2:22-CV-00398-JRG-RSP, 2024 BL 235405, at *3 (E.D. Tex. June 4, 2024) (“The requisite element of post-suit knowledge of the patent is satisfied by the complaint.”).
[7] Motion Offense, LLC v. Dropbox, Inc., No. 6:23-CV-303-ADA, 2024 BL 297370, at *3 (W.D. Tex. Aug. 26, 2024) (“Motion Offense sufficiently pleaded post-suit willful infringement because the facts pleaded in the FAC satisfy the three Parity factors. As this court held in BillJco, ‘[s]erving a complaint will, in most circumstances, notify the defendant of the asserted patent and the accused conduct. So long as the complaint also adequately alleges that the defendant is continuing its purportedly infringing conduct, it will satisfy all three Parity elements and sufficiently plead a post-filing/post-suit willful infringement claim.’”) (internal citations omitted); see Textile Comput. Sys. v. Broadway Nat’l Bank, 620 F. Supp. 3d 557, 568 (W.D. Tex. 2022); see BillJCo, LLC, 2022 U.S. Dist. LEXIS 17605, 2022 WL 299733, at *9-10 (“Serving a complaint will, in most circumstances, notify the defendant of the asserted patent and the accused conduct. So long as the complaint also adequately alleges that the defendant is continuing its purportedly infringing conduct, it will satisfy all three Parity elements and sufficiently plead a post-filing/post-suit willful infringement claim.”); see e.g., Atlas Glob. Techs., LLC v. Sercomm Corp., 638 F. Supp. 3d 721, 728 (W.D. Tex. 2022) (“Because Atlas’s Complaint does not plead sufficient facts that show that Sercomm had more than a general knowledge of Atlas’s patent portfolio, its FAC cannot plausibly support an allegation of pre-suit knowledge. Accordingly, the Court finds that Atlas has failed to plausibly allege pre-suit knowledge of the Asserted Patents.”).
[8] Universal Connectivity Techs. Inc. v. Dell Techs. Inc., No. 1:23-CV-01506-RP, 2024 BL 206926, at *7 (W.D. Tex. June 17, 2024).
[9] Carrum Techs., LLC v. BMW of N. Am., LLC, No. 18-1645-RGA, 2023 U.S. Dist. LEXIS 21962, at *6 (D. Del. Feb. 9, 2023).
[10] ZapFraud, Inc. v. Barracuda Networks, Inc., 528 F. Supp. 3d 247, 251 (D. Del. 2021).
[11] EyesMatch Ltd. v. Facebook, Inc., C.A. No. 21-111-RGA-JLH, 2021 BL 376291, at *3 (D. Del. Oct. 1, 2021) (internal citations omitted).
[12] While Judge Noreika has not expressly adopted a position on this split, the general consensus among practitioners is that she will let post-suit willfulness and indirect infringement claims move forward past the pleading stage. See DoDots Licensing Sols. LLC v. Lenovo Holding Co., C.A. No. 18-098 (MN), 2019 BL 257906, at *4 (D. Del. July 12, 2019) (internal citations omitted).
[13] Tonal Sys. v. Ifit Inc., No. 20-1197-LPS-CJB, 2022 U.S. Dist. LEXIS 61086, at *4 n.2 (D. Del. Mar. 30, 2022).
[14] Hills Point Indus. LLC v. Just Fur Love LLC, C.A. No. 22-1256 (GBW), 2023 BL 462659, at *5 (D. Del. Dec. 20, 2023) (“Accordingly, because the complaint itself cannot serve as the basis for Commerce’s knowledge of the asserted patents, the Court finds that Love has not pled facts sufficient to show that Commerce possessed actionable knowledge of the ’129, ’886, and ’177 patents for purposes of willful infringement.”).
[15] Kove IO, Inc. v. Amazon Web Servs., Inc., No. 18 C 8175, 2024 U.S. Dist. LEXIS 20478, at *18 (N.D. Ill. Feb. 6, 2024) (“In the absence of Federal Circuit guidance, this Court has concluded that the complaint can provide the required knowledge for a post-suit willful infringement claim. See MG Freesites Ltd. v. ScorpCast LLC, 651 F. Supp. 3d 744, 760-61 (D. Del. 2023) (Kennelly, J.). In alignment with this previously stated view, Kove may rely on the filing of the complaint to establish AWS’s knowledge of infringement for the period following the filing of the lawsuit.”).
[16] Intellect Wireless Inc. v. Sharp Corp., No. 10 C 6763, 2012 U.S. Dist. LEXIS 31669, at *35 (N.D. Ill. Mar. 9, 2012); see also Sonrai Sys., LLC v. AMCS Grp. Inc., No. 16 C 9404, 2017 U.S. Dist. LEXIS 159450, at *23-24 (N.D. Ill. Sept. 27, 2017) (“[t]he court declines to enforce the pleading standard [that contrary opinions in the District of Delaware] suggest. A plaintiff can only allege so much about a defendant’s subjective knowledge of infringement before discovery is conducted. Of course, a detailed demand letter sent to an indirect infringer is a sound basis for alleging knowledge, but the Delaware courts’ interpretation elevates such a letter from best practice to pleading requirement.”).
[17] E-Vision Optics, LLC v. Luxottica Grp. S.p.A., No. CV 23-02013-AB (SHKx), 2024 BL 203401, at *5 (C.D. Cal. June 11, 2024).
[18] Scramoge Tech. Ltd. v. Anker Innovations Ltd., No. 5:21-cv-01712-DOC-ADS, 2022 BL 186729, at *5 (C.D. Cal. Feb. 25, 2022).
[19] VenKee Commc’ns, LLC v. Ubiquiti Networks, Inc., No. SACV 21-1009 PSG (DFMx), 2022 BL 47807, at *9 (C.D. Cal. Jan. 26, 2022).
[20] GoTV Streaming, LLC v. Netflix, Inc., No. 2:22-cv-07556-RGK-SHK, 2023 U.S. Dist. LEXIS 27610, at *4 (C.D. Cal. Feb. 16, 2023); id. at *8 (“For these reasons, the Court holds that to state a claim for induced infringement, a plaintiff must allege that the alleged inducer had knowledge of the patent-in-suit prior to filing the action, regardless of whether that allegation is made in an original complaint or an amended complaint.”).
[21] DMF, Inc. v. AMP Plus, Inc., No. 2:18-cv-07090-CAS (GJSx), 2023 U.S. Dist. LEXIS 141372, at *8 (C.D. Cal. Aug. 11, 2023) (“To willfully infringe a patent, the patent must exist and one must have knowledge of it.”) (citing State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985)).
[22] Sonos, Inc. v. Google LLC, 591 F. Supp. 3d 638, 648 (N.D. Cal. 2022).
[23] VLSI Tech. LLC v. Intel. Corp., 706 F. Supp. 3d 953, 996 (N.D. Cal. 2023).
[24] Apple Inc. v. AliveCor, Inc., No. 22-cv-07608-HSG, 2023 U.S. Dist. LEXIS 106611, at *6 (N.D. Cal. June 20, 2023).
[25] Bascom Research LLC v. Facebook, Inc., No. C 12-6293 SI, 2013 U.S. Dist. LEXIS 41429, at *12 (N.D. Cal. Mar. 12, 2013); e.g., Symantec Corp. v. Veeam Software Corp., No. C 12-00700 SI, 2012 U.S. Dist. LEXIS 75729, at *11 (N.D. Cal. May 31, 2012) (“The Court finds that plaintiff has adequately pled knowledge of alleged infringement as of the date of the complaint.”).
[26] See e.g., Mobile Enhancement Sols. LLC v. HTC Corp., No. 3:12-cv-00794-M, 2013 U.S. Dist. LEXIS 182956, at *8 (N.D. Tex. Mar. 6, 2013); see also Zitovault v. IBM, Civil Action No. 3:16-cv-0962-M, 2018 U.S. Dist. LEXIS 234542, at *7 (N.D. Tex. Mar. 29, 2018) (In discussing that the alleged infringer saw reference to the plaintiff’s prior art in their own patent application, the Court found that “[t]he Complaint states a claim against IBM for pre-suit and post-suit willful infringement and against SoftLayer for post-suit willful infringement.”).
[27] Fate Therapeutics, Inc. v. Shoreline Biosciences, Inc., 665 F. Supp. 3d 1214, 1227 (S.D. Cal. 2023).
Co-authored by Law Clerk Brian Traub.