In a recent memorandum order, Judge Richard G. Andrews granted defendants’ motion to preclude plaintiff’s assertion of willful infringement. Inventio AG v. Thyssenkrupp Elevator Americas Corp., C.A. No. 08-874-RGA (D. Del. Nov. 20, 2013). First, Judge Andrews found that the complaint did not contain any factual assertions related to willfulness, noting that “[t]he words ‘wilfull,’ ‘willfully,’ ‘objectively unreasonable,’ ‘knowledge of the patent,’ or any similar construct, do not appear in the Complaint.” Id. at 1. While plaintiff argued that its request for a “declaration that this is an exceptional case pursuant to 35 U.S.C. § 285” put defendants on notice of its willfulness claim, Judge Andrews found that a “demand for relief is not a factual assertion.” Id. Second, Judge Andrews found that plaintiff should not be permitted to amend its complaint to assert wilfull infringement, noting that the deadline to amend the pleading was “nearly a year ago,” and that plaintiff had not shown the diligence required by the good cause standard under Fed. R. Civ. P. 16. Id. at 1-2.
Third, Judge Andrews found that plaintiff “proffered no evidence from which pre-filing willful infringement could be found.” Id. at 2. Specifically, Judge Andrews found that the “hazy testimony” plaintiff cited was insufficient to establish that defendants had pre-suit knowledge of the asserted patents. Id. at 3. Further, while plaintiff argued that defendants saw that “Schindler’s elevator repair operations,” were marked with five patents, Judge Andrews explained, among other things, that none of those patents were asserted in the instant litigation, and that it did not appear that defendants copied any patented aspects of the marked Schindler product. Id. at 3 & n.3.
Fourth, Judge Andrews found that plaintiff failed to set forth a sufficient to basis to pursue a post-filing willfulness claim. Id. at 3. Plaintiff argued that a post-filing claim was justified because “it did not know Defendants were engaged in any post-filing infringement until receiving discovery.” Id. at 4. Judge Andrews found, however, that such argument made “no sense,” in part because plaintiff’s complaint indicated there was post-filing infringement. Id. Moreover, as Judge Andrews explained, “[i]t seems hard to believe that Plaintiff, having learned that its competitor was infringing its patents by renovation projects that would take some period of time to complete, did not know (without the need for discovery) that the infringement was, as it alleged, continuing.” Id. at 5