General Pre-Suit Licensing Communication Insufficient to Survive Motion to Dismiss Claims for Willful Infringement

Written By: Jacob Blumert

In a report and recommendation for Evolved Wireless, LLC v. Samsung Electronics Co., LTD. and Samsung Electronics America, Inc., Magistrate Judge Sherry R. Fallon recommended the dismissal of Evolved Wireless’s claims for willful infringement and pre-complaint indirect infringement, finding the Evolved “failed to adequately plead” the required elements of each claim. No. CV 15-545-SLR-SRF (D. Del. March 15, 2016).

Evolved brought suit against Samsung for its manufacture of telecommunication devices that use Long Term Evolution (“LTE”) wireless communication systems. Prior to filing the complaint, Evolved contacted Samsung on six different occasions from November 4, 2014 to January 6, 2015, in an attempt to start negotiations for a license to manufacture and sell its LTE devices. Id. After Samsung’s refusal to negotiate, Evolved sent a letter listing eighty-five U.S. and foreign patents and patent applications and stating that “the use of one or more patent claims in the portfolio is required to practice or otherwise comply with LTE standards or technical specifications.” Id. at 2 and 6 (internal citations omitted).

In recommending the dismissal of the willfulness claims, the Magistrate Judge found that Evolved’s pleading failed to support a finding of either objective recklessness or subjective knowledge of the patents at issue required to state a claim for willful infringement. Id. at 5-8. Addressing the subjective prong first, the Magistrate Judge noted Evolved’s communications did not specifically call out any of the patents in suit from the eight-five listed patents, and Evolved did not allege in the complaint that the patents at issue were well-known in the industry. Id. at 6. Regarding the objective prong, the Magistrate Judge held that Evolved failed to plead that Samsung acted with objective recklessness “because nothing in the complaint demonstrates that Samsung was aware of the risk of infringement.” Id. at 10. Notwithstanding Evolved’s numerous communications, the Magistrate Judge reasoned that Samsung could not have been objectively reckless in refusing to obtain a license because Evolved’s letters neither identified any specific patents out as posing a risk of infringement nor identified any particular one of Samsung’s products as infringing the patents in suit. Id.

Regarding the claims for pre-complaint inducement and contributory infringement, the Magistrate Judge noted that inducement requires knowingly inducing infringement and contributory infringement requires knowledge that a component is especially adapted for use in an infringement. Id. at 11. The Magistrate Judge noted that because the complaint failed to sufficiently allege that Samsung understood the infringing nature of the asserted conduct, Evolved had also failed to adequately plead that Samsung intended for its customers to infringe any of the patents at issue. Id. at 13.

This report and recommendation reflects the growing body of law, in Delaware and beyond, regarding the specificity of allegations that must be made pre-suit to support claims for willful or indirect infringement. Patentees should be aware that pre-complaint letters that do not specially identify any potentially infringed patents and/or potentially infringing products may not provide sufficient support for later filed claims of willfulness and/or pre-complaint claims of indirect infringement. Likewise, defendants targeted by non-practicing entities in the District of Delaware should be aware of these heightened requirements as potential avenues of attack against blanket infringement assertions.