California District Court Sides with Majority Position, Dismissing Willful and Induced Infringement Claims that Relied on Original Complaint for Knowledge of Asserted Patent
On January 18, 2022, U.S. District Judge R. Gary Klausner of the Central District of California sided with the majority of divided district courts, dismissing claims of willful and induced infringement that based the defendants’ required knowledge of the asserted patents on its receipt of the original complaint for patent infringement. Ravgen Inc. v. Quest Diagnostics Inc., No. 21-cv-09011 (C.D. Cal. Jan. 18, 2022) ECF 146 - Order dismiss willful infringement
In this case, Ravgen sued Quest for willful, direct, induced, and contributory infringement of the plaintiffs’ prenatal genetic testing patents, U.S. Patent Nos. 7,332,277 and 7,727,720. Quest moved to dismiss the willful, induced, and contributory infringement claims, arguing that pre-suit knowledge is a necessary element of the willful and secondary infringement counts and that Plaintiff had not alleged that Quest had knowledge of the asserted patents prior to the filing of the complaint.
Acknowledging an ongoing split among district courts, which the Federal Circuit has not yet resolved, Judge Klausner sided with the majority view on the issue of whether willful and secondary infringement claims must allege pre-suit knowledge of the allegedly infringed patents or whether knowledge may be supplied by the complaint itself. Siding with the majority of opinions, the court held that a defendant must have knowledge of the asserted patent(s) prior to a suit, and that post-suit allegations of continuing infringement are alone insufficient. Furthermore, the court observed that a defendant continuing its allegedly infringing acts after being sued does not necessarily establish willfulness, but may simply reflect a subjective belief that an infringement claim is meritless. Thus, the court declined to require that all defendants accused of patent infringement immediately cease all allegedly infringing activity or be subject to a claim of willful infringement, which the Supreme Court has observed is typically “reserved for egregious cases.” Id. (citing Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103-04 (2016)).
Following the same logic, the court also dismissed Ravgen’s induced infringement claims that were based solely on post-suit knowledge of the allegedly infringed patent because induced infringement requires an allegation that the defendant had knowledge of the asserted patent. (The Court also dismissed Ravgen’s contributory infringement claim, which Ravgen did not oppose.)
In the absence of any binding authority from the Federal Circuit or Supreme Court, district courts are likely to remain divided over whether infringement allegations in a complaint can satisfy the knowledge requirements for indirect or willful infringement allegations in that action. In the meantime, Judge Klausner has added his support to those courts finding that willful and secondary infringement requires an allegation of pre-suit knowledge.