Magistrate Judge Christopher J. Burke recently recommended denial of a motion to dismiss pre-suit induced infringement claims, to the extent damages were sought for such pre-suit infringement. Elm 3DS Innovations, LLC v. SK hynix Inc., et al., C.A. No. 14-1432-LPS-CJB (D. Del. Oct. 16, 2015). The complaint did not allege direct evidence of pre-suit knowledge of the plaintiff’s ’239 patent, but Judge Burke found that it alleged certain indirect evidence that, taken together, rendered it at least plausible that the defendants did, in fact, have pre-suit knowledge of the ’239 patent. The complaint alleged that the plaintiff’s president made a presentation to an executive and around 60 of defendants’ engineers in 2000 or 2001 relating to the ’239 patent’s parent, and that the ’239 patent was also well known in the industry and cited by defendants’ competitors in numerous patent applications. Id. at 4-5. On balance, Judge Burke found that these allegations “render it at least plausible that [defendants were] aware of the [patent-in-suit] and its claims as of the date of the patent’s issuance.” Id. at 4. Judge Burke also found that the complaint “plausibly allege[d] that Defendants knew that their semiconductor chips at issue were in fact incorporated into their customers’ (e.g., global equipment manufacturers like Apple, Microsoft, Samsung and HTC) finished electronic products sold in the United States.” Id. at 10-11.
Update: On March 31, 2016, Chief Judge Leonard P. Stark adopted Magistrate Judge’s Burke’s report and recommendation.