There is a conflict between district courts, including those in this district, as to whether an alleged inducer must be shown to have had knowledge of the patent prior to the filing of a lawsuit. See e.g. Zond, Inc. v. SK Hynix Inc., No. 13-11591-RGS, 2014 WL 346008, at *3 (D. Mass. Jan. 31, 2014) (noting that "district courts are divided over the issue of whether pre-suit knowledge of a patent-in-suit is required to support an initial claim for indirect infringement. The Federal Circuit has not as yet addressed the issue") (parentheses omitted).
There exists a straightforward split of authority as to whether post-suit knowledge of a patent satisfies the knowledge element for indirect infringement claims. See, e.g., Zond, Inc. v. SK Hynix Inc., No.13 Civ. 11570, 2014 WL 346008, at *3 (D. Mass. Jan. 31, 2014) ("District courts are divided over the issue of whether pre-suit knowledge of a patent-in-suit is required to support an initial claim for indirect infringement. The Federal Circuit has not as yet addressed the issue.") (parentheses omitted); compare, e.g., Aguirre v. Powerchute Sports, LLC, No. 10 Civ. 702, 2011 WL 2471299, at *3 (W.D. Tex. June 17, 2011) ("To the extent [plaintiff] relies on knowledge of [his] patent after the lawsuit was filed, such knowledge is insufficient to plead the requisite knowledge for indirect infringement.") (citing Xpoint Technologies v. Microsoft Corp., 730 F.Supp.2d 349, 356 (D. Del. 2010)) with Memory Integrity, LLC v. Intel Corp., No. 15 Civ. 262, 2015 WL 4251026, at *2 (D. Or. July 13, 2015) ("Knowledge of the patent is straightforward: Service of the complaint provides the defendant with notice of the patent's existence, and knowledge of the patent as of the date of service is sufficient.") (citing Black Hills Media, LLC v. Pioneer Corp., 2013 W
See, e.g., Regents of the Univ. of Minn. v. AT&T Mobility LLC, No. 14–4666, 135 F.Supp.3d 1000, 1010–12, 2015 WL 5719465, at *7 (D.Minn. Sep. 29, 2015) (surveying district courts and finding that district courts in Delaware, the Eastern District of Texas, the Northern District of California, and the Northern District of Illinois have allowed post-complaint inducement to be pleaded based on knowledge acquired as a result of the defendant's receipt of the complaint); Bascom Research LLC v. Facebook, Inc., No. C12–6293, 2013 WL 968210, at *4 (N.D.Cal. Mar. 12, 2013) ; Walker Digital, LLC v. Facebook, Inc., 852 F.Supp.2d 559, 565 (D.Del.2012) ; Trading Techs. Int'l, Inc. v. BCG Partners, Inc., No. 10C715, 2011 WL 3946581, at *4 (N.D.Ill. Sept. 2, 2011) ; see also Zond, Inc. v. SK Hynix Inc., Civil Action Nos. 13–11591 & 13–11570, 2014 WL 346008, at *3 (D.Mass. Jan. 31, 2014) (“[P]leading actual knowledge as of the date of the filing of the original complaint sufficiently states a claim for induced infringement, but only in a later amended complaint.”); contra Orlando Commc'ns LLC v. LG Elecs., Inc., No. 6:14–cv–1017, 2015 WL 1246500, at *8–9 (M.D.Fla. Mar. 16, 2015) ; Proxyconn v. Microsoft, No. SACV 11–1681, 2012 WL 1835680, at *7 (C.D.Cal.
This approach, although rejected by some district courts, is in keeping with the decisions of most courts that have considered the issue recently. See, e.g., Regents of the Univ. of Minn. v. AT&T Mobility LLC, No. 14-4666, 2015 WL 5719465, at *7 (D. Minn., Sep. 29, 2015) (surveying district courts and finding that district courts in Delaware, the Eastern District of Texas, the Northern District of California, and the Northern District of Illinois have allowed post-complaint inducement to be pleaded based on knowledge acquired as a result of the defendant's receipt of the complaint); Bascom Research LLC v. Facebook, Inc., No. C12-6293, 2013 WL 968210, at *4 (N.D. Cal. Mar. 12, 2013); Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 565 (D. Del. 2012); Trading Techs. Int'l, Inc. v. BCG Partners, Inc., No. 10C715 et al., 2011 WL 3946581, at *4 (N.D. Ill. Sept. 2, 2011); see also Zond, Inc. v. SK Hynix Inc., Civil Action Nos. 13-11591 & 13-11570, 2014 WL 346008, at *3 (D. Mass. Jan. 31, 2014) ("[P]leading actual knowledge as of the date of the filing of the original complaint sufficiently states a claim for induced infringement, but only in a later amended complaint."); contra Orlando Commc'ns LLC v. LG Elecs., Inc., No. 6:14-cv-1017, 2015 WL 1246500, at *8-9 (M.D. Fla. Mar. 16, 2015); Proxyconn v. Microsoft, No. SACV 11-1681, 2012 WL 1835680, at *7 (C.D. Cal. May 16, 2012). In the absence of any Federal Circuit decision addressing this issue, this Court is persuaded by reasoning adopted by the majority of recent district court decisions that have ruled that a complaint provides sufficient notice of the existence of the patent-in-suit to support a claim of indirect infringement as to conduct following the filing of the initial complaint in the case.
By alleging “that defendants actively entice[d] their customers through advertising, marketing and sales activity to use [their] infringing products as part of their own infringing products,” the University has adequately pled an induced infringement claim. Zond, Inc. v. SK Hynix Inc., Nos. 13–11591 & 13–11570, 2014 WL 346008, at *5 (D.Mass. Jan. 31, 2014) (internal quotation marks omitted).The amended complaint further alleges a contributory infringement claim: that the Defendants knew their products infringed the Asserted Patents, and their products required customers to use the LTE wireless communication networks, whose design directly infringed the University's patents. “Assuming that [the University] owns the [Asserted Patents] and that Defendants perform any one of the listed activities, the Court can conclude that [the University] has stated a plausible claim that entitles it to relief.” Tune Hunter Inc. v. Samsung Telecomms. Am., LLC, No. 09–148, 2010 WL 1409245, at *4 (E.D.Tex. Apr. 1, 2010).
In other words, some courts hold that although a plaintiff generally may not pursue a claim for willful infringement if it does not seek a preliminary injunction, that is not a per se rule. See, e.g.,Zond, Inc. v. SK Hynix Inc., 2014 WL 346008, at *6 (D.Mass. Jan. 31, 2014) (holding that patentee could not maintain a willful infringement claim based on post-filing conduct when patentee did not seek preliminary injunction and did not meet one of the exceptions to the preliminary injunction requirement). But it's not clear why there should be any relationship between the decision by a patentee to refrain from seeking a preliminary injunction and the question of whether a defendant is willfully infringing after a lawsuit is filed.
I have found nine cases from this circuit considering this question, and Interwoven is alone among them in holding that Form 18's standard does not govern. See Zond, Inc. v. Fujitsu Semiconductor Ltd., 990 F. Supp. 2d 50, 54 (D. Mass. 2014) (holding that Form 18 controls); SCVNGR, Inc. v. eCharge Licensing, LLC, Civ. No. 13-12418, 2014 WL 4804738 (D. Mass. Sept. 25, 2014) (same); Zond, LLC v. Renesas Elecs. Corp., Civ. No. 13-11625, 2014 WL 4161348 (D. Mass. Aug. 15, 2014) (same); Zond, LLC v. Toshiba Corp., Civ. No. 13-11581, 2014 WL 4056024 (D. Mass. Aug. 14, 2014) (same); Zond, Inc. v. SK Hynix Inc., Civ. No. 13-11591, 2014 WL 346008 (D. Mass. Jan. 31, 2014) (same); Select Retrieval, LLC v. Bulbs.com Inc., Civ. No. 12-10389, 2012 WL 6045942 (D. Mass. Dec. 4, 2012) (same); Select Retrieval, LLC v. L.L. Bean, Inc., Civ. No. 12-0003, 2012 WL 5381503 (D. Me. Oct. 31, 2012) (same); InvestmentSignals, LLC v. Irrisoft, Inc., Civ. No. 10-600, 2011 WL 3320525 (D.N.H. Aug. 1, 2011) (same). That said, some courts have come to the same conclusion as did Interwoven. See, e.g., Macronix Int'l Co., Ltd. v. Spansion, Inc., 4 F. Supp. 3d 797, 804 (E.D. Va. 2014).
A "Form 18 notice pleading standard . . . will suffice for claims of direct infringement." Zond, Inc. v. SK Hynix Inc., No. 13-11591-RGS, 2014 WL 346008, at *2 (D. Mass. Jan. 31, 2014) (citing Superior Indus., LLC v. Thor Global Enters. Ltd., 700 F.3d 1287, 1295 (Fed. Cir. 2012)); see Zond LLC v. Toshiba Corp., No. 13-cv-11581-DJC, 2014 WL 4056024, at *2 (D. Mass. August 14, 2014) (concluding that "Form 18 continues to control the pleading requirements for a claim of direct infringement"). Form 18 requires "(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent 'by making, selling, and using [the device] embodying the patent'; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages."
The Court agrees with the other court in the district to consider these precise allegations that they do not give rise to a plausible inference of pre-suit knowledge. See Zond, Inc. v. SK Hynix Inc., No. 13-11591-RGS, 2014 WL 346008, at *2 (D. Mass. Jan. 31, 2014) (holding that allegation that defendants attended the 2007 SEMICON WEST trade show was insufficient to establish pre-suit knowledge). 2.