Judge Fallon recommends dismissing willful infringement and pre-complaint indirect infringement claims

In a recent Report and Recommendation, Magistrate Judge Sherry R. Fallon recommended that the Court dismiss plaintiff’s (“Evolved Wireless”) willful infringement claims and claims for pre-complaint inducement and contributory infringement pursuant to FRCP 12(b)(6). Evolved Wireless, LLC v. Samsung Electronics Co., Ltd., C.A. No. 15-545-SLR-SRF (D. Del. Mar. 15, 2016). Judge Fallon first addressed defendants’ (“Samsung”) pre-suit knowledge of the five patents-in-suit. Judge Fallon found, among other things, that Evolved Wireless’s allegations in the complaint regarding a May 4, 2015 FRAND licensing letter were insufficient to establish that Samsung had pre-suit knowledge of the patents-in-suit. Judge Fallon explained that the letter included “a list of eighty-five U.S. and foreign patents and applications, [and stated] that ‘the use of one or more patent claims in the portfolio is required to practice or otherwise comply with LTE standards or technical specifications.’” Id. at 6. The letter failed to “identify the patents-in-suit in this action from the list of eighty-five patents and patent applications.” Id. Judge Fallon also noted that “[t]he complaint in the instant case contains no allegations that the patents-in-suit are well-known in the industry.” Id. at 7. Judge Fallon thus concluded that Evolved Wireless failed to plead that Samsung had pre-suit knowledge of the patents-in-suit. Id. at 8.

Judge Fallon next found that Evolved Wireless failed to sufficiently plead the “objective recklessness” prong of the willful infringement standard. Judge Fallon explained that “Samsung’s refusal to enter into a licensing agreement with Evolved Wireless in response to a letter that did not accuse Samsung of infringement, did not identify any allegedly infringing products made by Samsung, and did not specifically identify the patents-in-suit from the appendix of eighty-five patents and patent applications does not demonstrate that Samsung was objectively reckless in continuing to manufacture, market, and sell the LTE devices.” Id. at 10. Judge Fallon thus recommended that the Court dismiss Evolved Wireless’s willful infringement allegations.

Next, Judge Fallon also recommended that the Court dismiss Evolved Wireless’s pre-complaint induced and contributory infringement claims. As noted, Judge Fallon had found that “Evolved Wireless . . . failed to sufficiently plead that Samsung had knowledge of the patents-in-suit and the infringement allegations prior to the filing of this action.” Id. at 12. As to the intent element, Judge Fallon added that “[b]ecause the complaint fails to sufficiently allege that Samsung understood the infringing nature of the asserted conduct prior to commencement of the suit, Evolved Wireless has not adequately pleaded that Samsung specifically intended that its customers would infringe the patents-in-suit.” Id. at 13.


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