The Software IP Report

Pre-Suit Publicity Not Enough to Plead Willful Patent Infringement

By Charles Bieneman

Categories: Patent Infringement, Software Patents, The Software IP Report

The plaintiff in Softview, LLC v. Apple, Inc., Civ. No. 10-389-LPS (D. Del. July 26, 2012), successfully pled willful patent infringement against some defendants, but not others.  Publicity about a patent is not enough from which to infer the pre-suit knowledge that is a prerequisite to willfulness, but such knowledge might be inferred from activities of a party and/or related parties.  (This opinion also addressed other issues, including denying a motion to stay, that this post will not discuss.)

AT&T allegedly had pre-suit knowledge in three ways: first, through a subsidiary that had cited a published parent application of the patent-in-suit, second, through a connection with the inventor, and third, via Apple in the course of its status as the exclusive carrier to use the iPhone.  The court called AT&T’s motion to dismiss a “close call.”  None of the allegations standing alone was adequate.  “Several steps of speculation” were required to infer willfulness.  However, “[t]aken in combination, the Court concludes that SoftView has alleged a plausible basis from which one might reasonably infer that AT&T had knowledge of the patent-in-suit prior to this litigation.”

Kyocera, on the other hand, was alleged to have had pre-suit knowledge merely from the publicity arising from the filing of the action against Apple and AT&T.  However, “[t]he mere fact that SoftView’s lawsuit against Apple and AT&T was reported in certain media outlets does not, by itself, plausibly suggest that Kyocera would have been aware of those particular media reports, particularly given the sheer number and frequency of patent lawsuits asserted against smartphone manufacturers.”

For a set of remaining defendants, SoftView, the plaintiff, alleged pre-suit knowledge based on pre-suit publicity and the defendants’ memberships in a defensive patent aggregator with whom SoftView had had licensing discussions.  The court agreed “with SoftView that the RPX Defendants’ relationship with RPX, in light of RPX’s business model, provides a plausible basis for reasonably inferring that the RPX Defendants became aware of both patents-in-suit.”

The court dismissed (without prejudice) allegations of willful infringement against Kyocera because, under In re Seagate Tech, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), willfulness requires pre-suit knowledge.  However, allegations against other defendants were “not based solely on these Defendants’ post-filing conduct, but are also based on their pre-filing conduct, including the plausible allegations that the RPX Defendants became aware of the patents-in-suit prior to litigation through their relationship with RPX.”  Therefore, dismissal of willfulness allegations against other defendants was not warranted.