United States District Court, D. Delaware
E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington,
Delaware; Christopher Abernethy, Morgan Chu, Benjamin W.
Hattenbach, Leah Johannesson, Amy E. Proctor, Dominik
Slusarczyk, S. Adina Stohl, Charlotte J. Wen, IRELL &
MANELLA LLP, Los Angeles, California, Counsel for Plaintiff
B. Blumenfeld, Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, Delaware; Omar F. Amin, GIBSON, DUNN
& CRUTCHER LLP, Washington, District of Columbia; Mark N.
Reiter, GIBSON, DUNN & CRUTCHER LLP, Dallas, Texas; David
C. Marcus, WILMER, CUTLER, PICKERING, HALE AND DORR LLP, Los
Angeles, California; Arthur W. Coviello, Liv Herriot, Jason
D. Kipnis, Mark D. Selwyn, Kathryn Zalewski, WILMER, CUTLER,
PICKERING, HALE AND DORR LLP, Palo Alto, California; Richard
A. Crudo, Gregory H. Lantier, Christa Laser, Amanda L. Major,
WILMER, CUTLER, PICKERING, HALE AND DORR LLP, Washington,
District of Columbia; Alexandra Amrhein, Kevin A. Goldman,
Jordan L. Hirsch, William F. Lee, Dominic E. Massa, Joseph
Mueller, Louis W. Tompros, WILMER, CUTLER, PICKERING, HALE
AND DORR LLP, Boston, Massachusetts; Olga Musayev, S. Calvin
Walden, WILMER, CUTLER, PICKERING, HALE AND DORR LLP, New
York, New York, Counsel for Defendant
CONNOLLY, UNITED STATES DISTRICT JUDGE.
VLSI Technology LLC has sued Defendant Intel Corporation for
patent infringement. VLSI alleges that Intel has directly and
willfully infringed and, unless enjoined, will directly and
willfully infringe five patents relating to computer chip
technology-U.S. Patent Nos. 6, 212, 633 (the "#633
patent"), 7, 246, 027 (the "#027 patent"), 7,
247, 552 (the "#552 patent"), 7, 523, 331 (the
"#331 patent"), and 8, 081, 026 (the "#026
patent"). See D.I. 1 at ¶¶ 15, 37,
46, 60, 68, 88, 97, 119, 128, 148. VLSI also alleges that
Intel has indirectly infringed and, unless enjoined, will
indirectly infringe the #633, #027, #331, and #026 patents.
See Id. at ¶¶ 32, 33, 55, 56, 114, 115,
143, 144. VLSFs indirect infringement claims are based on
allegations of both induced infringement and contributory
infringement. VLSI also seeks in the complaint's prayer
for relief "enhanced damages pursuant to 35 U.S.C.
§ 284." Id. at 46.
filed a motion to dismiss "VLSFs claims for willful
infringement" of the #633, #552, #331, and #026 patents
and VLSFs claims for indirect infringement of the #633, #331,
and #026 patents. D.I. 17. As the Patent Act, 35 U.S.C.
§ 1 et seq., does not create a cause of action
for willful infringement, I understand Intel's motion to
dismiss "VLSFs claims for willful infringement" to
be a motion, with respect to the #633, #552, #331, and #026
patents, to dismiss VLSI's willfulness-based claim for
enhanced damages under 35 U.S.C. § 284 and strike from
the complaint the allegations of willful infringement.
See generally Deere & Co. v. AGCO Corp., 2019 WL
668492, at *3-4 (D. Del. Feb. 19, 2019).
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 v. Planco Fin.
Servs., 542 F.3d 59, 64 (3d Cir. 2008).
Federal Circuit law, to allege plausibly a willfulness-based
enhanced damages claim, VLSI must allege facts from which it
can be plausibly inferred both that Intel knew about the
asserted patents and that Intel knew or should have known
that its conduct amounted to infringement of those patents.
See Deere, 2019 WL 668492, at *4 (citing WCM
Indus., Inc. v. IPS Corp., 721 F.App'x 959, 970
(Fed. Cir. 2018); Arctic Cat Inc. v. Bombardier
Recreational Prods. Inc., 876 F.3d 1350, 1371 (Fed. Cir.
2017); and WesternGeco L.L.C. v. Ion Geophysical
Corp., 837 F.3d 1358, 1362 (Fed. Cir. 2016),
rev'don other grounds, 138 S.Ct. 2129 (2018)).
"[I]nduced infringement [and] contributory
infringement require [both] knowledge of the patent[s] in
suit and knowledge of patent infringement." Commil
USA, LLC v. Cisco Sys., Inc., 135 S.Ct. 1920, 1926
of the Asserted Patents
complaint plausibly alleges that Intel knew of the existence
of the #633, #331, and #026 patents, as it alleges that Intel
cited these patents in Intel's prosecutions of other
patents. D.I. 1 at ¶¶31, 113, 142. The complaint,
however, fails to allege any facts from which it can be
plausibly inferred that Intel knew or should have known of
the existence of the #552 patent.
respect to the #552 patent, the complaint alleges only that
"Intel has had knowledge of the [#]552 Patent at least
since the filing of this complaint, and if it did not have
actual knowledge prior to that time, it was willfully blind
to the existence of the [#]552 Patent based on, for example,
its publicly-known corporate policy forbidding its employees
from reading patents held by outside companies or
individuals." Id. at ¶ 84. This allegation
is deficient in two respects. First, the complaint itself
cannot serve as the basis for a defendant's actionable
knowledge. The purpose of a complaint is not to create a
claim but rather to obtain relief for an existing claim.
Second, knowledge based on willful blindness exists only
where "(1) the defendant  subjectively believe[d] that
there [was] a high probability that a fact exists and (2) the
defendant  [took] deliberate actions to avoid learning of
that fact." Global-Tech Appliances, Inc. v. SEB
S.A., 563 U.S. 754, 769 (2011). Here, there is no
allegation in the complaint from which it could be plausibly
inferred that Intel subjectively believed that there was a
high probability that the #552 patent existed; and thus there
is no basis from which to conclude that Intel was willfully
blind to the #552 patent's existence. Accordingly, I will
dismiss the claim for enhanced damages insofar as it is based
on the #552 patent. (VLSI did not allege induced or
contributory infringement of the #552 patent.)
of Patent Infringement
argues in it briefing that its allegations of willful
blindness make it plausible that Intel knew or was willfully
blind about whether Intel's products infringe the
asserted patents. In VLSI's words:
In addition to willfully blinding itself to VLSI's
patents, Intel also willfully blinded itself to its
infringement of those patents.
For example, Intel's
"publicly-known corporate policy forbidding its
employees from reading patents held by outside companies or
individuals" also prevented its engineers from comparing
those patents to Intel's products, yet it is precisely
that comparison that would have resulted in Intel's
actual knowledge of its infringement.
D.I. 27 at 14 (emphasis added) (quoting D.I. 1 at ¶ 31).
But VLSI alleges in its complaint only that "Intel has
been willfully blind to [each] patent's
existence." D.I. 1 at ¶¶ 31, 54, 113, 142
(emphasis added); see also D.I. 1 at ¶ 84
("Intel... was willfully blind to the existence
of the [#]552 Patent....") (emphasis added). VSLI never
alleges that Intel has been willfully blind to its
infringement of those patents. Accordingly, with respect
to the #633, #552, #331, and #026 patents, I will strike from
the complaint the allegations of willful infringement and
dismiss the enhanced ...