Although it is possible for an alleged infringer to prove at trial that it lacked the requisite intent to induce
infringement for acts occurring even after commencement of the infringement action, see Commil
USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1367-68 (Fed. Cir. 2013), it is not incumbent on Plaintiff
to plead the absence of such defense in the complaint. For the foregoing reasons, Defendants’ motion
for judgment dismissing induced infringement is denied.
Defendants also maintain Plaintiff’s request for pre-filing damages should be dismissed based
on failure of Plaintiff’s licensees to mark the patent practicing products and absence of any pre-filing
notice. As previously noted, the marking issue cannot be resolved based on the face of the pleadings
or the PIC, and therefore cannot be adjudicated at this time. Because Plaintiff has alleged with respect
at least three of the patents that Defendants had pre-filing notice, the Court declines the request to
dismiss pre-filing damage claims at this time.
Third, Defendants argue Plaintiff failed sufficiently to allege contributory infringement. “[A]
a party who sells a component with knowledge that the component is especially designed for use in
a patented invention, and is not a staple article of commerce suitable for substantial noninfringing use,
is liable as a contributory infringer.” Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1353 (Fed.
Cir. 2010) (internal quotation marks and citation omitted). As with induced infringement, knowledge
of the existence of the patent claimed to be infringed is a prerequisite. Global-Tech Appliances, 131
S.Ct. at 2067-68.
Defendants initially contend Plaintiff failed sufficiently to allege knowledge of the patents at
issue. This contention is rejected for the reasons stated with respect to induced infringement.
Finally, Defendants seek dismissal of the willful infringement claim, which Plaintiff has
already voluntarily withdrawn. (See Opp’n at 2; PIC at 12-13.) Accordingly, Defendants’ motion to
dismiss willful infringement is granted, and the claim is dismissed without prejudice.
For the foregoing reasons, Defendants’ motion for judgment on the pleadings is granted in part
and denied in part. The motion is granted with respect to Plaintiff’s claim for willful infringement,
which is dismissed without prejudice. The motion is denied in all other respects.
