United States District Court, D. Delaware
W. Poff, Pilar G. Kraman, YOUNG, CONAWAY, STARGATT &
TAYLOR LLP, Wilmington, Delaware; Richard L. Rainey, Kevin B.
Collins, R. Jason Fowler, Jay I. Alexander, Daniel E.
Valencia, Nicholas L. Envoy, COVINGTON & BURLING LLP,
Washington, District of Columbia Counsel for Plaintiff
B. Blumenfeld, Jeremy A. Tigan, Anthony D. Raucci, MORRIS,
NICHOLS, ARSHT & TUNNELL LLP, Wilmington, Delaware;
Michael J. Summersgill, Jordan L. Hirsch, WILMER, CUTLER,
PICKERING, HALE AND DOOR LLP, Boston, Massachusetts; Mary V.
Sooter, WILMER, CUTLER, PICKERING, HALE AND DOOR LLP, Denver,
Colorado; Heath A. Brooks, Michael E. Wolin, WILMER, CUTLER,
PICKERING, HALE AND DOOR LLP, Washington, District of
Columbia Counsel for Defendants
Deere & Company has sued Defendants AGCO Corporation and
Precision Planting LLC, alleging direct, induced,
contributory, and willful infringement of the same 13 patents
in 13 respective counts of separate but similar amended
complaints. See generally D.I. 9 in Civil Action No.
18-827 ("AFAC"); D.I. 9 in Civil Action No. 18-828
("PFAC"). AGCO and Precision Planting filed in
their respective actions identical motions to dismiss
Deere's "claims of indirect and willful infringement
and enhanced damages" pursuant to Federal Rule of Civil
Procedure 12(b)(6) for failure to state a claim upon which
relief can be granted. See D.I. II. For the reasons
discussed below, I will grant in part and deny in part the
manufactures and sells planters-mechanical implements towed
behind a tractor that sow seeds in rows in a field. Precision
Planting manufactures and sells components of planters,
including certain seed meters (the vSet Products) and a seed
delivery system (the SpeedTube Product). Deere alleges in
both amended complaints that the combination of a vSet
Product with the SpeedTube Product infringes its
patents-in-suit. See AFAC ¶ 89; PFAC ¶ 87.
Deere also alleges-in the AGCO amended complaint only-that
the installation of the vSet Products and/or the SpeedTube
Product in certain planters manufactured and sold by AGCO
results in a combination that infringes the patents-in-suit.
See AFAC ¶ 97.
alleges in both amended complaints that Defendants marketed
and sold the combination of the vSet Products with the
SpeedTube Product, and also that they
"instruct[ed]" certain "Downstream
Parties," i.e., "end users, customers, dealers,
distributors, and/or resellers," AFAC ¶ 107; PFAC
¶ 93, "to combine the vSet Products with the
SpeedTube product and make, use, sell, offer to sell, and/or
import those products together." AFAC ¶¶ 125,
145, 168, 190, 211, 232, 251, 270, 290, 309, 332, 354, 376;
PFAC ¶¶ 111, 131, 154, 176, 197, 218, 237, 256,
276, 295, 318, 340, 362. Deere also alleges in the AGCO
amended complaint that AGCO marketed and sold planters that
had a vSet Product and/or the SpeedTube Product. See AFAC
¶¶ 99, 101, 104.
letter sent to Precision Planting on August 11, 2017, Deere
identified the four patents it asserts in Counts 1, 2, 5, and
6 of the amended complaints and "explain[ed] that
Precision Planting's products infringe multiple
claims" of those patents. AFAC ¶¶ 129, 149,
215, 236; PFAC ¶¶ 115, 135, 201, 222. Although
Deere attached 24 and 22 exhibits, respectively, to the AGCO
and Precision Planting amended complaints, it did not attach
(or quote from) the August 2017 letter; nor did it make
"Precision Planting's products" a defined term
in the amended complaints or allege any additional facts
about the contents of the August 2017 letter in either
amended complaint. Thus, there is no allegation in the
amended complaints that Deere identified in the August 2017
letter the vSet Products or SpeedTube Product; and there is
no allegation that Deere stated in the letter that the
combination of those products or the combination of
AGCO's planters with either a vSet Product or the
SpeedTube Product infringes any of the four patents asserted
in Counts 1, 2, 5, and 6 of the amended complaints.
about September 1, 2017, AGCO acquired Precision Planting as
a subsidiary. AFAC ¶ 17; PFAC ¶ 17.
instruction manual dated October 2016 and published as
recently as May 24, 2018 on Precision Planting's website,
Precision Planting instructed customers to combine a vSet
Product with the SpeedTube Product. See AFAC
¶¶ 92, 93 and Ex. 22; PFAC ¶¶ 90, 91 and
Ex. 21. As recently as May 24, 2018, AGCO published on its
website marketing materials that featured an AGCO planter
with the SpeedTube Product and an AGCO planter with a vSet
Product. See AFAC ¶¶ 66, 99, 101, 103,
1, 2018, Deere filed its original complaints in these
actions. According to the Precision Planting amended
complaint, the original complaint against Precision Planting
alleged that the combination of the vSet and SpeedTube
Products infringe claims of the eight patents asserted in
Counts 3-4 and 7-12 of the amended complaints. See
PFAC ¶¶ 158, 180, 241, 260, 280, 299, 322,
344.According to the AGCO amended complaint,
the original complaint filed against AGCO alleged that both
the combination of a vSet Product with the SpeedTube Product
and the combination of an AGCO planter with a vSet Product
and/or the SpeedTube Product infringe claims of those eight
patents. See AFAC ¶¶ 172, 194, 255, 274,
294, 313, 336, 358.
patent asserted in Count 13 of the amended complaints (U.S.
Patent No. 10, 004, 173 (the "#173 Patent")) was
issued on June 26, 2018. AFAC ¶ 363; PFAC ¶ 349.
Deere alleges that it informed Defendants' counsel on
June 27, 2018 of the issuance of the #173 Patent. AFAC ¶
380; PFAC ¶ 366. According to the Precision Planting
amended complaint, Deere also informed Defendants'
counsel on that date "that claims of the [#] 173 Patent
are infringed by" the combination of the vSet and
SpeedTube Products. PFAC ¶ 366. According to the AGCO
amended complaint, Deere also informed Defendants'
counsel on June 27, 2018 that both the combination of a vSet
Product and the SpeedTube Product and the combination of
AGCO's planters with a vSet Product and/or the SpeedTube
Product infringe claims of the #173 Patent. AFAC ¶
filed its amended complaints against AGCO and Precision
Planting on July 11, 2018.
state a claim upon which relief can be granted, a complaint
must contain "a short and plain statement of the claim
showing that the pleader is entitled to relief." FED. R.
Civ. P. 8(A)(2). Detailed factual allegations are not
required, but the complaint must set forth sufficient factual
matter, accepted as true, to "state a claim to relief
that is plausible on its face." Bell Ail. Corp. v.
Twombly, 550 U.S. 544, 570 (2007). A claim is facially
plausible when the factual content allows the court to draw
the reasonable inference that the defendant is liable for the
misconduct alleged. Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009). When considering a Rule 12(b)(6) motion to
dismiss, the court must accept as true all factual
allegations in the complaint and view them in the light most
favorable to the plaintiff. Umland, 542 F.3d at 64.
have moved to dismiss Deere's claims for enhanced
damages, induced infringement, and contributory infringement.
284 of the Patent Act "gives district courts the
discretion to award enhanced damages against those guilty of
patent infringement." Halo Elecs., Inc. v. Pulse
Elecs., Inc., 136 S.Ct. 1923, 1935 (2016). The statute
provides that "the court may increase the damages up to
three times the amount found or assessed." 35 U.S.C.
§ 284. Although the Court in Halo intentionally
"eschew[ed] any rigid formula for awarding enhanced
damages under § 284," 136 S.Ct. at 1934, the Court
held that the legal principles "developed over nearly
two centuries of application and interpretation of the Patent
Act... channel the exercise of [the district court's]
discretion" and "limit[ ] the award of enhanced
damages to egregious cases of misconduct beyond typical
infringement," id. at 1935. Thus, enhanced
damages awards under § 284 are available only in
"egregious cases" of misconduct that involve more
than "typical" infringement. Id. As the
Court explained, the enhanced damages award provided by
§ 284 was "designed as a 'punitive' or
'vindictive' sanction for egregious infringement
behavior ... [that] has been variously described in [the
Court's] cases as willful, wanton, malicious, bad-faith,
deliberate, consciously wrongful, flagrant,
or-indeed-characteristic of a pirate." Id. at
"§ 284 allows district courts to punish th[is] full
range of culpable behavior[J" id. at 1933, in
the vast majority of patent cases filed today, claims for
enhanced damages are sought based on allegations of willful
misconduct-so much so that, even though the words
"willful" and "willfulness" do not appear
in § 284, plaintiffs and courts more often than not
describe claims for enhanced damages brought under § 284
as "willful infringement claims" (just as Deere has
done in this case). Indeed, some parties and courts refer to
such claims as willful infringement "causes of
action" even though § 271 of the Patent Act, which
creates causes of action for direct, induced, and
contributory infringement, does not mention or suggest such a
thing as "willful infringement." The fact that
willfulness is the most common type of misconduct alleged by
plaintiffs who invoke § 284 makes sense, as willful
conduct "serve[s] as [the] floor for culpable behavior
that may incur enhanced damages." Robert L. Harmon,
Cynthia A. Homan & Laura A. Lydigsen, Patents and the
Federal Circuit, § 17.3(a), at 1378 ...