Magistrate Judge Christopher J. Burke recently considered defendants Ubisoft Entertainment SA and Ubisoft Inc.’s motion to dismiss plaintiff Princeton Digital Image Corp.’s claims in its Third Amended Complaint for indirect and willful infringement of U.S. Patent No. 5,513,129. Princeton Digital Image Corp. v. Ubisoft Entm’t SA, No. 13-335-LPS-CJB (D. Del. Nov. 4, 2016). Regarding indirect infringement, Defendants argued that the Third Amended Complaint failed to allege actual knowledge of the patent-in-suit prior to the lawsuit, and that the original Complaint failed to put Defendants on notice of Plaintiff’s claims after the suit was filed. Id. at 8. Judge Burke agreed.
Regarding pre-suit knowledge, Judge Burke found that Plaintiff’s allegation that Defendants had knowledge merely because it was aware of a patent that described the patent-in-suit was “too tenuous to permit the reasonable inference that Defendants had actual knowledge of the [patent-in-suit].” Id. at 13. Regarding post-suit knowledge, Judge Burke found that the patent-in-suit expired three months after the original Complaint was filed, and that Complaint did not provide any basis for the indirect infringement allegations now pled in the Third Amended Complaint. Id. at 18-21. Similarly, Judge Burke also recommended dismissing Plaintiff’s claims of willful infringement because the Third Amended Complaint failed to adequately allege that Defendants had pre-suit knowledge of the patent-in-suit; and because the original Complaint did not plead indirect infringement (willful or otherwise) or how Defendants’ actions in the three month window between the filing of the suit and the expiration of the patent were “an ‘egregious’ case of infringement of the patent.” Id. at 23-25.