Judge Robinson Denies Motion to Dismiss Willful Infringement Claim

The Defendant in this case, Ancestry.com, moved to dismiss several aspects of the Plaintiff’s operative complaint, each of which Judge Robinson addressed in turn in this order. First, regarding willful infringement, Judge Robinson found that the complaint adequately alleged that Ancestry was aware of the patent-in-suit before the lawsuit was filed. Ancestry had approved a label for saliva collection products provided by Plaintiff Genotek that included a URL patent marking, and Ancestry’s own patent application had uncovered Genotek’s application as potential prior art. Judge Robinson found that “any of the above facts taken alone would not provide sufficient indicia that the [patent-in-suit] was called to the attention of Ancestry. However, the factual circumstances surrounding the parties’ dispute, taken as a whole, satisfy the requirement that the [patent-in-suit] was called to Ancestry’s attention . . . [because] the parties were in an ongoing business relationship whereby Ancestry was made aware that the saliva collection kits purchased from DNA Genotek were marked as patent-protected, Dr. Chahine, a patent attorney and general manager at Ancestry, not only was responsible for approving the labels Ancestry attached to the DNA Genotek products, but was also the first-named inventor on Ancestry’s ‘701 Application, . . . [and] Ancestry was directly informed that the [Genotek] Application was relevant prior art and that the [Genotek] patent was a family member.” DNA Genotek Inc. v. Ancestry.com DNA, LLC., C.A. No. 15-355-SLR, Memo. Or. at 2-4 (D. Del. Mar. 22, 2016).

Judge Robinson dismissed, however, counts for conversion and trespass to chattels, finding that the counts did not pass muster under the economic loss doctrine. Genotek argued that Ancestry had committed conversion and damaged the value of Genotek’s patent portfolio by filing certain Ancestry applications. Genotek also had, however, an independent count for breach of contract that covered these allegations. Thus, the economic loss doctrine applied because the duties allegedly violated arose from contract. Id. at 4-6. Finally, Judge Robinson refused to dismiss the count to quiet title, finding that Genotek need merely show that it could acquire an interest in the property subject to the quiet title claim. Id. at 6-7.

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