Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., LTD. et al, No. 2:2012cv00548 - Document 395 (E.D. Va. 2013)

Court Description: OPINION AND ORDER granting in part and denying in part 124 Motion to Dismiss for Failure to State a Claim; granting 126 Motion. Defendants' Motion to Dismiss Count VIII, alleging willful infringement, (ECF No. 124) is GRANTED with respect to the '711, '268, and '381 patents, and DENIED with respect to the '492, '733, and '398 patents. Defendants' Motion to Strike (ECF No. 124) is DENIED. Defendants' Request for Judicial Notice (ECF No. 126) is GRANTED. IT IS SO ORDERED. Signed by District Judge Mark S. Davis and filed on 11/15/13. Copies distributed to all counsel of record 11/17/13. (ldab, )

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OP VIRGINIA Norfolk Division VIRGINIA INNOVATION SCIENCES, INC., Plaintiff, Case No.: v. 2:12cv548 SAMSUNG ELECTRONICS CO., LTD., ET AL., Defendants. OPINION AND ORDER This matter is currently before the Court on motions filed by Samsung Electronics Inc., Co., Ltd., Samsung Electronics and Samsung Telecommunications America, "Samsung" or "Defendants"). move an order: for Infringement, pursuant to allegations pursuant motion to in Fed. and Fed. before the R. R. the the first motion, Count VIII, First Civ. prayer (collectively dismissing " (1) In LLC Amended P. for Civ. P. Court Complaint 12(b)(6) relief 12(f)." is and (2) relating Defendants for Willful (the 'FAC'), striking to ECF No. 124. Defendant's America, Count motion The the VIII, second requesting judicial notice of a Notice of Allowability upon which Samsung wishes 126. to rely in support of its motion to dismiss. ECF No. The motions have been fully briefed and are therefore ripe for decision. After examination of the briefs and the record, the Court has determined that a hearing as the facts and and the decisional unnecessary, presented, significantly by E.D. Civ. Va. Loc. oral DENIES, in Dismiss part, Claim Complaint; legal arguments process and are is adequately not be aided R. Civ. P. 78(b); the reasons For motions would See Fed. that follow, the Request for Judicial Notice in Support to Dismiss for instant 7 (J). R. Samsung's Motion the argument. Court GRANTS Defendants' of on Claim for Willful GRANTS, in Willful part, Defendants' Infringement and DENIES Defendants' Infringement; Motion in to Motion First to Amended Strike Allegations and Prayer for Relief Regarding Same. I. In the Virginia "VIS") FACTUAL AND PROCEDURAL BACKGROUND instant Innovation alleges willfully that patent Sciences, infringement Inc. Defendants infringed the have action, (hereinafter directly, patents-in-suit "Plaintiff" indirectly, making, and using, for sale, selling, accused products, including players, and hubs. Samsung denies VIS's claims of infringement of all several equitable doctrines. counterclaims smartphones, affirmative patents-in-suit, seeking importing a wide or offering and asserts and/or by plaintiff defenses, tablets, including prosecution history Additionally, declarations of invalidity for each of the patents-in-suit. range of Blue-ray invalidity estoppel and other Samsung asserts non-infringement and At issue in this case are the following six patents: Patent No. 8,050,711 7,899,492 ("the x268 patent"), U.S. 4711 Patent No. No. 8,135,398 U.S. ("the patent"), Patent 7,957,733 ("the which and x268, all ("the claimed 60/588,359, a of ("the 8,224,381 '733 8,145,268 ("the patent"), All of '381 and U.S. Patent to now the U.S. filed on July 16, '492 Provisional 2004. The '711, specification a substantively the %733 '492 The of substantively describes ("the the patents-in-suit 11/165,341, priority No. patent"), share specification"). share No. Patent the continuations-in-part all No. Patent U.S. '381 patents are continuations of four '492 U.S. Application No. itself Application No. patent"), '398 patent"). claim priority to U.S. patent, '492 U.S. the '733 '492 identical specification, specification"). inventions impracticality of and to '398 patent. along These with of resolve multimedia ("the patents specification, Each intended viewing identical '492 patent and two are patents which includes additional material the the patents-in-suit inconvenience content on the and small screens of mobile terminals. The Court held its Markman hearing in this matter on June 11, 2013 Since and issued its Markman opinion on September 25, this hearing, matter and several there motions various stages of briefing. have been numerous filings remain pending before 2013. in this the Court, By Order of October 25, 2013, in the Court joined Sciences, for Inc. No. 2:13cv322. now set for standards trial v. Samsung ECF matter No. 353. 2014. review, and Electronics 21, April of this the The Co., trial After Court Virginia Ltd., of first Support of Infringement. Defendants' First Samsung's ECF Motion No. Complaint, and for Relief Regarding Same. II. A. F.R.E. adjudicative permits The Court the Strike the applicable Defendants' Claim then for cannot Court R. be is Evid. readily Fed. 201(c)(1). Prayer REVIEW R. "judicially determined take and "governs judicial notice of reasonably questioned." permitted to the Infringement in Evid. notice 201(a). a fact from Fed. the is . rule not (1) is generally known sources R. judicial notice However, The that within the trial court's territorial jurisdiction; or and Willful addresses Allegations subject to reasonable dispute because it: accurately is Request for Judicial Notice Evidence 201 to matters 124. STANDARD OF fact[s]." court to ECF No. 201(b)(2) Federal Rule of . Dismiss Motion to Dismiss Claim for Willful Amended Case for Judicial Notice to 126. al., two addresses Motion and Memorandum in Support of Request in et the reciting Innovation Court (2) whose accuracy Evid. 201(b). "on its own." "must take can be The Fed. judicial notice if a party requests it and the court is supplied with the necessary information." Fed. R. Evid. 201(c)(2). B. A it Rule 12(b)(6) Motion to Dismiss complaint appears that should be dismissed under Rule the claim for relief. facts alleged Ashcroft v. (quoting Bell Atl. Corp. fail Iqbal v. Twombly, to 556 12(b)(6) state a U.S. 550 U.S. "plausible" 662, 544, where 678 570 (2009) (2007)). "Factual allegations must be enough to raise a right to relief above the speculative level ... on the assumption that all the allegations fact)." in the Twombly, complaint 550 U.S. are at true 555. (even "And, if of doubtful course, a in well- pleaded complaint may proceed even if it strikes a savvy judge that actual proof of those facts is improbable, recovery is very remote and unlikely.'" Id. Circuit recently explained the standard as a Rule 12(b)(6) motion 'facial plausibility' the court liable for by pleading a The Fourth follows: "To survive complaint must 'factual the misconduct 708 F.3d alleged.'" 549, 554 content establish that allows the defendant is Clatterbuck (4th a Cir. v. City 2013) of (quoting 556 U.S. at 678). In dismiss, factual dismiss, 'that at 556. to draw the reasonable inference that Charlottesville, Iqbal, to and assessing a the district allegations merits court of "'must contained in reasonable inferences in favor of Volunteer Fire Dept., Inc. v. a Rule accept the 12(b)(6) as true complaint' all and the plaintiff.'" Montgomery County, motion of to the 'draw all Kensington Md. , 684 F.3d 462, v. 467 (4th Cir. Kolon Indus., while a light most 637 district elements further for 2012) of court cause factual Rule F.3d 435, favorable a a must to of 12(b)(6) plaintiff 440 (4th Cir. action, and fail 591 to allege is However, facts "legal in F.3d 250, assertions devoid facts Chevrolet, 255 (4th to of facts Ltd. Cir. sufficient entitled to relief, the conclusions, constitute well-pled Nemet Inc. , infer that such plaintiff bare to 2011)). well-pled plaintiff, purposes." fails du Pont de Nemours & Co. construe the enhancement Consumeraf fairs. com, If (quoting E.I, v. 2009). plausibly then dismissal must be granted. Plaintiff 1354, 1357 cites (Fed. McZeal Cir. v. 2007) Sprint and Nextel argues that, sufficiently plead infringement of a patent, only plead facts notice as to what Twombly and Iqbal on, McZeal sufficient he in requires F.3d order to the "patentee need the alleged infringer on defend." Although brief, the in 501 to place must its Corp., Court the citation to clarify Plaintiff to, cites and reliance the appropriate standard in order to avoid any confusion on the point. In McZeal, with the 501 F.3d at question of 1357, whether the Federal a pro se plaintiff's following the requirements of Form 18 to the Federal Rules Procedure that case), of Civil Circuit was faced complaint, in the Appendix of Forms (Form 16 at the time of can survive a motion to dismiss under Rule 12(b)(6). This Court, in previously examining McZeal, "agree[d] with the post-Twombly holding in McZeal that a litigant who complies with the provisions direct the of Form infringement extent Twombly 18 has sufficiently stated a as contemplated and Iqbal by require Rule claim for 12(b)(6), more, need not and, meet more stringent Twombly and Iqbal plausibility standard."1 Gore & Assocs., 675 (E.D. Va. the Federal and could v. 2011). Rules sufficient, Iqbal Inc. state 2d 667, "[s]ince Supreme have compliance Court's amended 778 the F. with decisions Federal the in forms Twombly Rules, alleging literal infringement that tracks Form 18 a that, Circuit "to the recently extent progeny conflict requirements, of a claim specificity the the with parties forms the forms for by Form (Fed. Cir. same argue that and is sufficient Id. issue, Twombly differing The finding and its pleading and therefore the sufficiency infringement Transmission & Processing Sys. 1334 this and create control," "direct required addressed is complaint to withstand a motion to dismiss under Rule 12(b)(6)." Federal W.L. Supp. that Inc., the Court went on to hold that This the not Medtronic, to 18." is to In be re measured by Bill Patent Litigation, of the Lading 681 F.3d 1323, 2012) . 1 In reaching that conclusion, the Court relied on "the language of Rule 84 and statements made by the Supreme Court in Twombly." W.L. Gore & Associates, Inc. v. Medtronic, Inc., 778 F. Supp. 2d 667, 675 (E.D. Va. 2011). However, "[t]he foregoing only to claims of direct, analysis in W.L. Gore related literal infringement," and this Court subsequently concluded that the holding in McZeal does not apply to indirect comScore, Court, infringement Inc., 819 F. claims. Supp. Nielsen 2d 589, 600 Co. (E.D. (US), Va. LLC 2011) v. ("This consistent with the well-reasoned analyses of these other district courts, concludes that plaintiff's of indirect the standard set infringement must be evaluated under claims forth in Twombly and Iqbal, without reference to the language of Form 18, which only relates as the Federal Lading, 681 to claims Circuit F.3d at of direct infringement."). implicitly recognized 1334, it follows that in the In re Thus, Bill of sufficiency of Plaintiff's claim of willful infringement must also be evaluated under the standard set reference to Form 18. Case No. Cal. Sept. the 12cv6375, 4, Appendix claim forms, U.S. for the Supreme Court's the Dist. claims infringement including form 18"). considering Twombly LEXIS and inc. Iqbal without v. NVIDIA Corp., 126989, at *6 (N.D. ("Because there are no sample pleadings Forms for willful in Fuzzysharp Techs., 2013 2013) of forth is of not to infringement, governed by any of Accordingly, Twombly and Iqbal motion willful in a the the Court will apply plausibility standard in dismiss Plaintiff's willful infringement claim. The United States Supreme Court 8 decided Twombly, 550 U.S. 544, on May plausibility Circuit 21, 2007. pleading adopted In doing standard the current so, the referenced standard for Court adopted above. The Federal establishing willful infringement when they issued their post-Twombly August 20, opinion in In re Seagate, 497 F.3d 1360, 1371 (Fed. The Federal Circuit's Judge weeks Cir. opinion in In re Seagate was Mayer. A few later, on September LLC, 499 F.3d 1284 (Fed. addressed the pleading requirements The opinion in Mitutoyo Corp., by Judge Mayer, Cir. 5, Corp., the 499 F.3d 1284, Federal as 12(b)(6). its a dismissal for failure 499 F.3d at 1290. complaint, Mitutoyo 2007, the v. Central in which to was also authored reviewed the trial infringement claim, state a claim under and Rule The Federal Circuit noted that, had it 499 F.3d 1360. Circuit court's dismissal of Mitutoyo's willful so 2007) . for willful infringement.2 the author of In re Seagate, In Mitutoyo did 2007), 2007 authored by Federal Circuit issued its decision in Mitutoyo Corp. Purchasing, the alleged that the acts in of infringement by the defendant "occurred with full knowledge of" the patent Federal "and have Circuit allegations, about the been willful also noting commented that declaratory on and deliberate." the the plaintiff judgment suit details had filed of Id. additional "provided by The details [defendant] in 2 The Mitutoyo Corp. decision was issued nearly four months after the U.S. Supreme Court's May 21, 2007 decision in Twombly. 1995, which sought to invalidate and '902 patent, thereby establishing that of patent render the '902 concluded that the "[t]his requirements infringement Id. It any prior standard, of the including reaching this Id. plainly more 8(a) (2) avoid that [defendant] 2002." Rule and is notable analysis is of claim to newly the conclusion. for In Federal pleading under Circuit announced objective The In Circuit the to a Rule meet willful 12(b)(6)." did not engage in re Seagate recklessness fact, the had knowledge than sufficient dismissal the Federal unenforceable court proof analysis, did not in mention its In re Seagate opinion from two weeks earlier. The absence in Mitutoyo Corp. re Seagate proof standard is of any mention of the new In understandable in light of the difference between the pleading standard and the proof standard. While In re Seagate established the current standard for willful infringement, establish pleading Techs., LEXIS it willful willful Ltd., infringement. at Inc. No. (E.D. Tex. *6 v. Sun at *11-13 language In re Pharm., the "evidence not the Wordcheck Action LEXIS 144576, of addressed infringement," Civil 189071, Cephalon, only 2012) Ltd., prerequisites Tech., 6:10-cv-457, al., Unlike the to for v. Alt-N U.S. Dist. added); see, 2013 (D. N.J. October 7, 2013) Seagate). LLC 2012 (emphasis et necessary U.S. Dist. (analyzing the evidence standard established by In re Seagate for proof of willful infringement, 10 the Federal Circuit's opinion that a plaintiff allege and (2) pre-filing defendant. Techs., Inc., The beyond not 2013 "knowledge" to the mere which the to allege plaintiffs patent-in-suit of Rule accord, 126989, at LEXIS 144576, such Mitutoyo that however, the LEXIS Dist. existence by of the patent, 8 to patent-in-suit, which existence of a patent suit. See Fuzzysharp 126989, at *7 "'knowledge' that 1290] prior Facebook, *13-14 go substance, is to create requires a plausible beyond as Inc., U.S. 2013 as agree, the contents same number Corp. to standard knowledge (interpreting Mitutoyo the the of mere patent-in- Dist. meaning LEXIS that the element can be satisfied by averring facts showing the existence of filing of the complaint. (holding litigation knowledge the Techs., the defendant knew of prior to the at with means see also, must appear inference that defendant had some knowledge of the the Fuzzysharp *6-9; its Courts facts by knowledge plausibility sufficient only at *14-15. pre-filing Corp.. requires the patent-in-suit; 499 F.3d at 1290; Dist. 2013 U.S. extent resolved U.S. Corp. infringement of Mitutoyo Corp., Inc., Cephalon, (1) in Mitutoyo of Inc., (E.D.Va. that factual involving the patent)"); No. June I:13cvl58, 12, [Mitutoyo Corp., details the 2013 U.S. (adopting 11 showing Social Dist. into 499 F.3d knowledge patent-in-suit Rembrandt 2013) the patent-in-suit of 'establish[]' Media, LEXIS its LP v. 84245, at analysis of pre-suit knowledge in the willful infringement claim context its analysis of context, how pre-suit in which the Court the putative simply that knowledge in stated the that infringer learned of putative infringer the indirect "[w]hat matters the patents has allegedly infringed patent and its claims.") Although In re Seagate required clear and convincing evidence that an objectively infringement high of a "objectively high to valid Dist. motion LEXIS to to infringement, of to dismiss. 126989, at dismiss, pertaining patent, likelihood" survive a motion U.S. likelihood the the defendant's because such that . is not . but of the . knowledge (emphasis added). a patentee show that its actions constituted allegations pertaining infringement are not Fuzzysharp Techs., "In does determining not evidence Inc., a consider objective be in Fuzzysharp Techs., Peripheral Vascular, 1005 (Fed. defendant Cir. acted infringement Inc., Inc. 2012), the v. W.L. that despite entails motion." an an "the Id. Federal 12(b)(6) of high assessment held in which in Bard 682 F.3d 1003, of whether the likelihood of of defenses based on the risk presented by the patent." 12 its analyzed Circuit determination objective 2013 As the court noted Gore & Assocs., objectively an evidence knowledge must to required conjunction with the defenses available to the defendant, are not at issue in a 12(b)(6) by the infringer acted despite *9. Court infringement potential Therefore, at the proof Rule 12(b)(6) standards Accordingly, Samsung's stage, the Court the Court Rule Seagate, 499 In concludes 12(b)(6) infringement claim, delve by established need not re that motion to in order dismiss into F.3d to VIS' the 1360. survive willful VIS must plausibly allege 1) infringement of the patents-in-suit, and 2) pre-filing knowledge of the patents- in-suit by the Defendants. C. Rule 12(f) Motion to Strike It is unnecessary for this Court to address the standard of review asks applicable the Court to to that portion of Defendants' strike certain allegations prayer for relief because such a motion is for accomplishing Whittlestone, Cir. Inc. the v. dismissal of all or part by use of Rule 12(b) (6). Rule 12(f) and part which of the an improper vehicle claim. As recognized in 618 F.3d 970, 974-76 (9th is not a proper vehicle for procuring the of a pleading fails to state a claim for relief. Defendants' a Handi-Craft Co., 2010), Rule 12(f) dismissal of motion the ground that it Such relief is better sought Therefore, motion, on it since the Court will deny is unnecessary to further discuss the standard applicable to such motion. III. A. FRE 201(c)(2) Plaintiff alleges DISCUSSION Request for Judicial Notice that Defendants had knowledge of patents-in-suit before VIS filed its complaint in this case. 13 the In support of that assertion, information. Defendants As Plaintiff relies upon two sources of to or knew, the second should source, have Plaintiff known, of at alleges least that the '398 patent due to their receipt of a "Notice of References Cited" in conjunction with Application No. Notice of 11/647,153, Amended Compl. Defendants a 3 135. request Allowability which lists In an attempt that the Court the for U.S. Patent '398 patent. First to refute such assertion, take judicial notice of the Notice of Allowability. When considering a Rule 12(b)(6) the complaint, incorporated the into Court the motion, may complaint also by Apr. 30, (GBL), 2009) (4th Cir. Ltd., 551 U.S. of 322 request 11/647,153. Notice as an of 11/647,153 LEXIS Inc. 'documents and matters Haywood v. 36617, Locke, at of Gutierrez, *12 (E.D. Va. 387 F. App'x 355 v. Makor Issues & Rights, (2007)). that Allowability and Trademark Office Court Dist. (citing Tellabs, 308, Defendants No. U.S. aff'd sub nom. Haywood v. 2010) the Notice 2009 examine reference, which a court may take judicial notice.'" l:08cv981 "[i]n addition to the Court issued by on April 27, take the 2012 judicial notice United as part States of of Patent Application Such Notice of Allowability was supplied to the attachment Allowability to Defendants' for is an official U.S. U.S. request. Patent Government 14 Because Application document that the No. "can be accurately and cannot reasonably be Court takes pursuant that, to determined from questioned," Fed. judicial Fed. while a Fed. R. Evid. is readily R. notice of court must whose R. Evid. Notice the Evid. 201(c)(2). district sources of 201(b), the Allowability, The Court notes take accuracy judicial however, notice under 201(c)(2) where "a party requests it and the court supplied with the necessary information," a district court must still construe well-pled facts in the light most favorable to the plaintiff. Nemet Chevrolet, B. The proving Court Federal established infringement "overrule[d] and, in so doing, the that obtain opinion counsel." 2007). The showing of Federal threshold objective standard. Id. in order to set the re current Seagate, out in there is no an in which Underwater 497 F.3d held enhanced 1360, "that (Fed. standard a proof of at which and 1371 requires damages recklessness," willful objectively the Devices" requires subsequent infringement, high likelihood 15 "a Cir. willful least a meeting a subjective The threshold objective standard requires establish for affirmative obligation to show by clear and convincing evidence that despite standard the affirmative duty of due care" Circuit permitting objective In standard and "reemphasize[d] infringement in "abandon[ed] of 591 F.3d at 255. Rule 12(b)(6) Motion Circuit willful Ltd., patentee that, must the infringer acted that its actions constituted threshold infringement objective also demonstrate by the record of standard that this developed accused infringer." Tech., LLC., added). discussion, satisfied, the that Id. patent." must Dist. proceeding) was in infringement," infringement. LEXIS above Corp. (determined In re Seagate only addressed establish willful explained Mitutoyo this patentee the "If it should have been known to the However, U.S. Id. infringement for pleading willful 2012 As is in "evidence necessary to the prerequisites valid objectively-defined risk either known or so obvious the a 189071, the established at Wordcheck *6 standard the not (emphasis of review prerequisites for pleading willful infringement. The Federal Circuit, order to "allege plead (1) willful infringement, only (2) pre- the patent-in-suit by the defendant." 499 F.3d at 1290. Of course, above, these of the a recognized that in need infringement filing 'knowledge' of discussed in Mitutoyo Corp., plaintiff patent-in-suit; and as explained in the standard of review pleading requirements must be read in conjunction with the Twombly and Iqbal plausibility requirement. Therefore, in order pled sufficient of infringement filing F.3d at knowledge facts to prevent dismissal, VIS to plausibly support both and the of the allegation that patent-in-suit. 1290. 16 must have also the allegation Defendants Mitutoyo had Corp., pre499 1. infringement of the Patents-in-Suit VIS has amended alleged, complaint, patents. VIS infringed by has in the validity also Samsung's various alleged locations of that actions in the each the throughout asserted of has pled-that Samsung has least one of numerous infringes at VIS's plausibly support the assertion United States patents. Whether VIS has pled is regarding that each of which products, Samsung sufficient U.S. The facts six patents are that six these patents numerous allegedly infringing Samsung products. VIS the sufficient infringed facts to to VIS's plausibly allege that Samsung had pre-filing knowledge of VIS's patents is a closer question. 2. Pre-filing Knowledge a. The '492 Patent Family With respect requirement for prior to VIS's knew or should subsequent the willful filing of have patents application. to The infringement, of the claim priority to patent was '492 which was and the '341 Provisional Application No. filed on July 16, pleading alleged 2004. All 17 that, Samsung as well as the '492 patent '492 patent issued on March 1, 2005. priority from U.S. has patent 11/165,341, the VIS '492 Patent Application No. Both knowledge this suit on October 4, 2012, known which pre-filing all 2011 from U.S. filed on June 24, application claim 60/588,359, which the other asserted patents in this case were '492 patent. not continued from VIS appears of the patent specification and, have known also involve members that of the that risk of of only the which it claims priority, the motion to dismiss as (the '711, addressing '268, the appears to the and revealed their the the shared Samsung should '492 patent subsequently However, patent have matter, the now the parent patent, due infringing '398 would issued as VIS has offered the '492 patent from that VIS does not dispute to the other four patents individually '381, '492 but, infringing it as patent family. argument application, '492 shared subject risk to the family, patent as of thus, the '341 to allege that, only would knowledge rest this and patent, '733 the patents) . Court will However, address after those four patents for the sake of clarity. i. In support knowledge of of the the The '492 Patent assertion '492 patent, VIS has stated that, that Samsung had pre-filing VIS has pled the following facts. prior to the March 1, 2011 issuance of the '492 patent, its '341 patent application was published on April 13, U.S. Publication No. 2006 as Amended that, Patent Compl. f 115, on September 27, Application application"), ECF which No. 2005, No. was 2006/0077310 121. Samsung VIS 18 further First asserted filed and prosecuted U.S. 11/237,357 rejected by has ("Wang"). the ("the '357 patent United States Patent and Trademark Office on five separate occasions or "Wang" rendered obvious by First Amended Compl. 33 116-124. infer would in that reference Samsung because one other of anticipated references. From those facts, have can light as been familiar plausibly infer VIS seeks to with that the "Wang" a patent if application is rejected because of a particular publication, proponent of knowledge of In this However, such rejected patent application the publication on which case, the publication was of have Smith Corp., original). never a patent application. knowledge of a patent application is insufficient. must will gain the rejection was based. "To willfully infringe a patent, one would issue knowledge 751 F.2d 1226, "Filing an and result of a it." 1236 the patent must exist and State (Fed. Indus., Cir. application is no very substantial in patents. What Inc. v. A.O. 1985) (emphasis in guarantee any patent percentage the scope of of applications claims in patents that do issue will be is something totally unforeseeable." Thus, it the is insufficient to allege knowledge of a Id. patent application without further alleging knowledge of the patent. Samsung essentially argues that, due to its April 26, 2011 abandonment of the '357 patent application following the September 16, 2010 Office Action rejecting its it had no reason to know of the 19 final '357 application, issuance of a patent from the patent application, of which "Wang" was a publication.3 However, VIS that asserts notice of that the allowance October 28, rejecting 2010, timing for the '357 abandonment 2011. VIS '492 patent patent issued on March 1, 26, suspect, 2011, of the considering patent only one month after Samsung's Samsung's is the was final application, the published on Office Action and the VIS '492 one and a half months prior to '357 First Amended Compl. patent 33 application 124-126. on April It is a plausible inference that Samsung would have researched "Wang," as well as the other references 16, 2010 Office Action rejecting Samsung's '357 patent application, prior to application in which deciding to invested cited in the abandon a patent approximately five years Samsung continued its attempts final of September prosecution. they had After all, to overcome the rejections based on the "Wang" publication contained in the previous four Office Actions. Thus, favorable to create plausible a the having viewed Plaintiff, the VIS inference facts has that pled in the light sufficient Samsung knew of most facts to the '492 which issued from '268, '381, patent prior to VIS filing this suit. ii. The x711, With regard continuations of to the *268, the '492 '381, and x733 Patents subsequent patent patents (the '711, 3 Samsung abandoned the '357 patent application on April 26, failing to file a reply to the final September 16, First Amended Compl. 1 126. 20 '733, 2011 by 2010 Office Action. and '398 patents), with the sole exception of the '398 patent, VIS has failed to allege any facts that would plausibly support the inference that Samsung's knowledge of the '492 patent would extend to knowledge of such subsequent patents as well. facts alleged, this inference would only be plausible if Samsung had an affirmative duty to related to On the the '492 continue to monitor the applications patent. Prior to In re Seagate, the standard set forth in Underwater Devices required that where potential rights, infringer he has has an actual affirmative determine whether or not he is Inc. v. Cir. 1983), (Fed. this Morrison-Knudsen Cir. 2007). affirmative However, duty of perhaps, The that facts F.3d eventually, knew of for Rule at Inc., 255. 717 the due or patent care to Underwater Devices F.2d Federal 1380, LLC, 1389 (Fed. 497 F.3d 1360 Circuit abandoned and overruled Underwater Devices continue infringer becomes aware continuations-in-part, which could issue as patents. or their devoid of should issue 12(b)(6) As as care "bare assertions as exercise infringing." that a potential continuations Samsung patents to another's there can be no affirmative duty to to monitor any patent, for duty of overruled by In re Seagate Tech., in In re Seagate, of, Co., notice "a such, have dates known "fail purposes." and further 21 of to Nemet without factual any the enhancement" other asserted constitute well-pled Chevrolet, additional Ltd., facts 591 to support '381, the assertions and '733 patents, Samsung would simply This not is from know of that their Samsung's until undermines 1, 2011, the or '711, existence of of more the '268, that than Samsung patent. six after This gap in time would such months did have additional had a Therefore, even viewing the facts in the light most favorable to the of '492 reason knowledge of aware patents particular the Plaintiff, become as the continuations '357 patent application. assertion to of knowledge the earliest November any issuance alleged Samsung abandoned the knew there can be no plausible inference that especially so as issue Samsung patents. '492 patent would not plausibly entail knowledge of the patents which claim priority to the '492 patent. patent Having only relied on the relationship between the '492 and plausible the '711, inference knowledge of '268, that '381, and '733 patents Samsung had the requisite those patents, VIS has Furthermore, '268, '381, filed over and, VIS noted in above, infringement with it would be futile to allow VIS leave to amend amended complaint complaint pre-filing and '733 patents. the complaint as VIS has requested. furthermore, create a failed to plausibly allege the pre-filing knowledge required for willful respect to the '711, to order VIS's to is four months silent resolve brief The current complaint is an as the is 22 to after how it discovery began might deficiencies. entirely silent amend the In fact, as as to the sufficiency of the claim for willful infringement regarding the '711, '268, silence claim '381, VIS's on and part for relief infringement of '733 patents. as The Court interprets such conceding with regard those patents, VIS's to failure to state claim of willful the a and such concession is consistent with the Court's finding above. b. As noted above, The VIS allege infringement of the pleading willful to willful patent VIS allege must alleged have 2012) had that Samsung Allowability for Samsung's '153 References Cited listing the 3 135. Notice also While of has Allowability allege reasonable VIS factual inference plausibly that to allege of facts the '398 filing of this 499 F.3d at 1290. knowledge 27, Patent of the '398 2012 Notice of Application No. which included a Notice of First Amended Compl. that the allows the Defendants 23 order the an April pled referencing that to '398 patent. clearly content had U.S. application"), in knowledge Mitutoyo Corp., Samsung's receipt of ("the to also pled sufficient prior patent due to 11/647,153 facts However, Samsung 13, suit on October 4, 2012. has sufficient '398 patent the first requirement for that (issued on March VIS pled infringement. infringement, plausibly '398 Patent Samsung '398 the received patent, Court to had knowledge VIS draw of a must the such patent prior to the filing 678; Mitutoyo Corp., Samsung of this suit. Iqbal, 556 U.S. at 499 F.3d at 1290. argues that it would have had no reason to gain knowledge of the '398 patent from such patent's citation in the Notice of because Allowability the '398 patent would be However, it issued patent "had issued." on no Mot. Samsung's bearing on to Dismiss is not strictly accurate to '153 application whether at 7, say the Samsung's ECF No. 125. '398 patent had no bearing on the issuance of Samsung's patent4 as its citation in a Notice of Allowability meant act as a bar Notwithstanding failed to to this plausibly the that the issuance connection, allege '398 patent did not of Samsung Samsung's Samsung's argues that "knowledge" of patent. VIS has the '398 of the patent before the filing of this suit. In their arguments regarding the pleading of willful infringement of the parties rely on Rembrandt, 21, which includes asks facts whether 2013 U.S. an from which can '398 patent, both of the Dist. allegation one sufficiency of LEXIS 84245, willful plausibly infer at *18- infringement substantive 4 It is not strictly accurate to say the '398 patent had no bearing on the allowability of Samsung's patent, as, had the Patent Examiner concluded that the '398 patent was sufficiently relevant to anticipate or render obvious Samsung's patent application, it would have prevented the issuance of the Samsung patent application, at least as written at that point in time. Thus, the Patent Examiner's finding, that the '398 patent was relevant, did have a bearing on the issuance of the Notice of Allowance for Samsung's patent application in that it was examined and found not to bar issuance. 24 knowledge of the patent-in-suit and its claims. U.S. Dist. LEXIS 84245, at *13-14 ("[w]hat matters the putative infringer learned of the patents that the putative infringer has knowledge infringed patent and its claims." Rembrandt, is 2013 not how . . . but simply of the allegedly (emphasis added)). Therefore, the Court will address its application to this case. In Rembrandt, knowledge, separate the court held that four separate sources of including patents sufficient to citations that to defendant plausibly the had allege patent-in-suit knowledge that the not had Defendant two were of, in the requisite pre-suit knowledge of the patent-in-suit to make out a willful infringement claim.5 that, it "[a]t most, conceivable [plaintiff] that patents in issue, but to invite the Id. The Rembrandt court concluded has pled various [defendant] might have facts that make learned about the [plaintiff] has not pled sufficient facts plausible inference that [defendant] requisite pre-suit knowledge of either patent." had the Id. at *21. It is the opinion of this Court that, despite the lack of citation to Mitutoyo substantially Corp., similar the court standard as in Rembrandt Mitutoyo Corp. applied for a pleading 5 Of the four sources of knowledge, two are citations to the patent-insuit within other patents, one is a post-filing source of knowledge (the original complaint), and the fourth is that the plaintiff and defendant used the same law firm. Rembrandt, 2013 U.S. Dist. LEXIS 84245, at *7. Of these, the Court will address only the two citation sources of knowledge as they are the only ones with facts sufficiently similar to the instant case for their analysis in Rembrandt to be helpful. 25 willful infringement. Although Rembrandt cites to the standard announced by In re Seagate for establishing willful infringement at trial, the Rembrandt court only evaluated the complaint for adequate pleading of pre-suit "plausible inference[s]." knowledge, including via Id. at *16-18, *21. (emphasis added). Because the Rembrandt court focused on the adequate pleading of pre-suit Iqbal, knowledge this under Court the pleading standard of concludes that Rembrandt Twombly and comports with the Mitutoyo Corp. standard. Not only did the Rembrandt court the one adopted in Mitutoyo Corp., utilize a standard like its analysis of the plausible inferences at play is helpful in this Court's similar analysis. The court in Rembrandt found that defendant's purchase of a patent, which "cited to" the patent-in-suit, was insufficient to plausibly defendant patent. allege had Id. pre-suit not at knowledge participated *17. (emphasis in in a patent infringement suit that against was prosecution added). source of knowledge in Rembrandt was in-suit the specifically the The second a citation to subject of a the same defendant. because of that citation the patent- separate prior Id. at *17-18. Such a source of knowledge would ordinarily lead to a reasonable presumption of knowledge course of litigation and patent that defendant was of the the "cited to" associated patent investigation alleged to infringe. 26 through the of However, the that prior infringement suit was dismissed filed an answer to the complaint. Here, unlike the situation to infer that Samsung would, and enforceable patent thus, examiner have patent, as defendant Id. in Rembrandt, investigate it is to knowledge of references their the patent '398 Notice of Allowability issued on April 27, reasonable cited through successfully such facts its prosecution issued invite as a of a patent. the plausible from 2012. Therefore, the '153 the VIS '398 application which Court's inference the and, patent patent This by application has plausibly alleged that Samsung gained knowledge of patent even in its prosecution seeking a valid relevant gained before that finding, that Samsung had the requisite pre-suit knowledge of the '398 patent, is consistent with the court's analysis in Rembrandt. Additionally, pre-suit knowledge of the '398 patent would have led to knowledge of the '733 patent6 as it is listed in the Related U.S. Application Data section on the '398 patent. As the '733 patent is the first page of the intermediary which allows the '398 patent to ultimately claim priority to the patent, this complaint. connection First is Amended sufficiently Compl. 3 131. pled in the Therefore, '492 amended VIS has 6 Although the parties have represented to the Court that VIS is no longer asserting the '733 patent as infringed, the Court addresses it briefly because the '733 patent is still formally asserted in the current amended complaint. 27 plausibly alleged that Samsung had pre-filing knowledge of the '398 patent as well as the '733 patent. IV. To summarize, the willful viewing favor, the CONCLUSION Defendants' infringement facts Motion to Dismiss the of and all is DENIED as because, '492 reasonable patent inferences Defendants have not shown Plaintiff's plausible right to recover damages in to after Plaintiff's failure to plead a for willful infringement of the '492 patent. Defendant's infringement of patent. The known of patent, Motion the Dismiss '711 patent, allegation that is the GRANTED as to '268 patent, Defendants knew the from which they are Thus, which support would as continuations, VIS has the failed to assertion that is willful and the or '381 should have these patents simply from their knowledge of inference. patents, to not a the '492 reasonable allege any other facts Samsung these knew of VIS has failed to plausibly allege willful infringement of these patents by Defendants. Defendants' Motion to Dismiss is DENIED as to the willful infringement claim regarding the '398 patent and the '733 patent because, viewing Plaintiff's Defendants the favor, facts and Plaintiff all has had pre-filing knowledge of '733 patent. 28 reasonable inferences plausibly alleged the '398 patent in that and the Accordingly, alleging respect Defendants' infringement, willful to the Motion (ECF '711, '268, and to No. '381 Dismiss 124) '733, and '398 patents. to 124) Strike (ECF Judicial Notice No. (ECF No. The Clerk is counsel IT is 126) DIRECTED to is patents, respect to the '492, DENIED. Count VIII, GRANTED and with DENIED with Defendants' Motion Defendants' Request for is GRANTED. send a copy of this Order to all of record. IS SO ORDERED. /S/ Mark S. UNITED Norfolk, Virginia November 15 , 2013 29 STATES Davis DISTRICT JUDGE

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