Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 1 of 14 PageID #: 6099
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ALARM.COM, INC. and ICN
`ACQUISITION, LLC,
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`Plaintiffs;
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`V.
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`SECURENET TECHNOLOGIES LLC,
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`Defendant.
`
`Civil Action No. 15-807-RGA
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`MEMORANDUM OPINION
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`Mary B. Matterer and Kenneth L. Dorsney, MORRIS JAMES LLP, Wilmington, DE; Ian R.
`Liston, WILSON SONSINI GOODRICH & ROSATI, P.C., Wilmington, DE; James C. Yoon
`(argued), Ryan R. Smith (argued), Christopher D. Mays, and Mary A. Procaccio-Flowers,
`WILSON SONSINI GOODRICH & ROSATI, Palo Alto, CA, attorneys for Plaintiffs.
`
`Jack B. Blumenfeld and Stephen J. Kraftschik, MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP, Wilmington, DE; Erik B. Milch and Frank Pietrantonio, COOLEY LLP, Reston, VA; Rose
`Whelan (argued), and Naina Soni (argued), COOLEY LLP, Washington, DC, attorneys for
`Defendant.
`
`December~
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`, 2018
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`

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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 2 of 14 PageID #: 6100
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`AN
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`Currently pending before the Court is Defendant's Motion for Summary Judgment. (D.I.
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`175). The parties have fully briefed the issues. (D.I. 176, 182, 198). The Court heard oral
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`argument on December 3, 2018. (D.I. 208). After considering the briefing and arguments, the
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`Court GRANTS-IN-PART and DENIES-IN-PART Defendant's Motion. 1
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`I.
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`Background
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`Plaintiffs' predecessor-in-interest iControl Networks, Inc. filed this suit against
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`Defendant SecureNet Technologies LLC on September 11, 2015. (D.I. 1). The suit asserted
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`United States Patent Nos. 7,855,635 ("the '635 patent"), 8,473,619 ("the '619 patent"),
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`8,478,844 ("the '844 patent"), and 8,073,931 ("the '931 patent"). (Id. ~~ 3-7). The patents-in-
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`suit are generally related to integrating an alarm system with an external security network and
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`other interfaces. ('635 patent, Abstract; '619 patent, Abstract; '844 patent, Abstract; '931 patent,
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`Abstract).
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`On June 23, 2016, Plaintiffs Alarm.com and ICN Acquisition (collectively, "Plaintiffs")
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`entered into an Asset Purchase Agreement with iControl Networks to purchase the patents-in-
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`suit. (D.I. 177 at 209). Plaintiff lCN is a wholly-owned subsidiary of Plaintiff Alarm.com. (D.I.
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`186 ~ 2). On March 8, 2017, Plaintiff ICN completed its acquisition of the patents-in-suit. (D.I.
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`177 at 209,255). On March 29, 2017, the Court substituted Alarm.com and ICN for iControl as
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`Plaintiffs in this action. (D.I. 28). Defendant filed a Motion for Summary Judgment on October
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`30, 2018. (D.I. 175).
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`1 The Court reserves determination on the issue of compliance with the marking statute until the pretrial conference.
`1
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`

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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 3 of 14 PageID #: 6101
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`II.
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`Legal Standard
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`"The court shall grant summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.
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`R. Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
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`disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
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`330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
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`dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury
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`to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
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`2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242,248 (1986)). The burden on the
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`moving party may be discharged by pointing out to the district court that there is an absence of
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`evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
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`The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
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`for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986);
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`Williams v. Borough of West Chester, Pa. , 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving
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`party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to
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`particular parts of materials in the record, including depositions, documents, electronically stored
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`information, affidavits or declarations, stipulations . . . , admissions, interrogatory answers, or
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`other materials; or (B) showing that the materials cited [by the opposing party] do not establish
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`the absence ... of a genuine dispute .. .. " Fed. R. Civ. P. 56(c)(l).
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`When determining whether a genuine issue of material fact exists, the court must view
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`the evidence in the light most favorable to the non-moving party and draw all reasonable
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`inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter,
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`476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a
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`2
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 4 of 14 PageID #: 6102
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`reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49.
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`If the non-moving party fails to make a sufficient showing on an essential element of its case
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`with respect to which it has the burden of proof, the moving party is entitled to judgment as a
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`matter oflaw. See Celotex Corp., 477 U.S. at 322.
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`III. Discussion
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`A. Indefiniteness
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`Section 112 requires that "a patent's claims, viewed in light of the specification and
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`prosecution history, inform those skilled in the art about the scope of the invention with
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`reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see
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`also 35 U.S.C. § 112 ("The specification shall conclude with one or more claims particularly
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`pointing out and distinctly claiming the subject matter which the inventor ... regards as the
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`invention."). The requirement that patent claims be definite requires that patents be "precise
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`enough to afford clear notice of what is claimed, thereby apprising the public of what is still open
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`to them." Nautilus, 572 U.S. at 909 (cleaned up). "Indefiniteness is a question oflaw"
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`appropriate for summary judgment. Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d
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`1357, 1370 (Fed. Cir. 2017). A claim term "is indefinite if its language 'might mean several
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`different things and no informed and confident choice is available among the contending
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`definitions."' Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed
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`Cir. 2015) (quoting Nautilus, 572 U.S. at 911 n.8). However, "[b]readth is not indefiniteness."
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`BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1367 (Fed. Cir. 2017); see also SmithKline
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`Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005). A term with a broad
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`meaning will not therefore be indefinite simply because of its breadth.
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`3
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 5 of 14 PageID #: 6103
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`Defendant argues that the term "objects" as used in the '931, '619, and '844 patents is
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`indefinite because it is vague, has no discernible scope, is used in different contexts, and the
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`experts agree that "objects" can mean anything. (D.I. 176 at 15-18). Plaintiffs reply that
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`Defendant has failed to establish that "objects" is not reasonably certain in the context of the
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`intrinsic evidence, that there is a material factual dispute as to whether a person of ordinary skill
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`in the art would understand "objects' with reasonable certainty, and that Defendant's own
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`conduct confirms "objects" was understood with reasonable certainty. (D.I. 182 at 17-22). For
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`the following reasons, I determine that "objects" is not indefinite.
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`The claims of the '931, '619, and '844 patents use the term "objects" in substantially
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`similar ways. For example, claim 1 of the '931 patent is representative:
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`1. A device comprising:
`a touchscreen at a first location, wherein the touchscreen includes a processor
`coupled to a local area network (LAN) and a security system at the first
`location; and
`a plurality of interfaces presented by at least one application executing on the
`processor of the touchscreen and presented to a user via the touchscreen,
`wherein the plurality of interfaces include a security interface and a
`network interface, wherein the security interface provides the user with
`control of functions of the security system and access to data collected by
`the security system, wherein the network interface allows the user to
`transfer content to and from wide area network (WAN) coupled to the
`LAN;and
`a remote server at a second location, wherein the remote server is coupled to
`the touchscreen, the remote server managing at least one of the
`touchscreen and the security system, wherein objects are maintained on
`the remote server that correspond to at least one of at least one
`security system component of the security system and at least one
`network device of the LAN.
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`('931 patent, cl. 1 ).
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`First, Defendant argues that the term as used in the claims is vague. However, as
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`Defendant admits, the claim language makes clear that "objects" are something "that must be
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 6 of 14 PageID #: 6104
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`maintained on a server remote from the home being monitored." (D.I. 176 at 15). Being
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`maintained on a server indicates that "objects" are intangible. Furthermore, the claim language
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`indicates that "objects" are capable of corresponding to system components and network devices.
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`This would indicate to a person of ordinary skill in the art that "objects" refers to some sort of
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`data or information maintained on the remote server.
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`Second, Defendant argues, "The '931, '619, and '844 specifications confusingly refer to
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`'objects' in a variety of contexts" and do not clarify the vague meaning of"objects" as used in
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`the claims. (D.I. 176 at 16). In one section, the specification defines "objects" as "devices"
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`including sensors, camera, home security panels, and automation devices." ('931 patent col.
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`8:45-49). In another section, the specification refers to the "management of1] the objects
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`associated with an integrated security system installation." (Id. col. 8:37-40). Finally, a third
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`portion of the specification refers to "media objects" like "video, photos, and widget content."
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`(Id. col. 9:55-60). Yet, as discussed above, the claim language makes clear that an "object" must
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`be maintained on a remote server. Therefore, a person of ordinary skill in the art would not
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`confuse the specification's references to "objects" as physical devices with the term as used in
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`the claims. Moreover, the reference to "media objects" is consistent with a broad definition of
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`the term "objects" to include data or information. A term's broad scope does not make it
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`indefinite. BASF, 875 F.3d at 1367.
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`Finally, Defendant argues that the "three technical experts in this case agree that ... the
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`term 'objects' has several meanings. (D.I. 176 at 18). This overstates and misconstrues the
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`testimony of the technical experts. Plaintiffs' expert Dr. Clark defined "object" as "a discrete
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`entity that can contain ... bits and bytes that represent just about anything." (D.I. 177, Ex. 7 at
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`191: 17-20). Plaintiffs' other expert, Dr. Rhyne, stated that an object is "a data construct
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`5
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 7 of 14 PageID #: 6105
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`referenced by an identifier." (Id. , Ex. 8 ~ 128). At his deposition, Dr. Rhyne stated that a data
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`construct could be a variety of things. (Id. , Ex. 9 at 149:9-12). However, the fact that a term can
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`be defined broadly does not mean that the term is indefinite. BASF, 875 F.3d at 1367.
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`Defendant's expert, Dr. Polish, states, "There is no universal meaning for the term 'object."'
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`(D.I. 177, Ex. 6 at~~ 216, 223 , 228). However, the question of indefiniteness is not whether a
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`term has a universal meaning, but whether a person of ordinary skill in the art would understand
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`the term with "reasonable certainty" in light of the claims and the specification.
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`The claim language and the specification of the patents-in-suit informs a person of
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`ordinary skill in the art of the meaning of "objects" with the "reasonable certainty" required by §
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`112. It is clear that "objects" refers to data. While the range of "data" covered by the term may
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`be broad, a broadly-defined term does not make the term indefinite. However, given the dispute
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`as to the meaning of "objects," the Court will adopt the construction put forth by the parties:
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`"data representing information about component(s) or device(s)." (D.1. 207). This construction
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`gives effect to the plain meaning of the term in the context of the patents. The Court DENIES
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`Defendant's Motion to find the term "objects" indefinite.
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`B. Standing
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`Defendant alleges that Plaintiff Alarm.com does not have standing to sue as a co(cid:173)
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`plaintiff, as it is neither the owner of the patents nor has it shown it holds an exclusive license.
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`(D.I. 176 at 19). In response, Plaintiffs assert that Plaintiff Alarm.com does have standing to sue
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`and there is a dispute of material fact as to whether Plaintiff Alarm.com is an implied exclusive
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`licensee. (D.I. 182 at 13). For the following reasons, I determine that Plaintiff Alarm.com does
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`have standing to sue.
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`6
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 8 of 14 PageID #: 6106
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`"[T]he touchstone of constitutional standing in a patent infringement suit is whether a
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`party can establish that it has an exclusionary right to suffer legal injury." WiAV Sols. LLC v.
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`Motorola, Inc., 631 F.3d 1257, 1265 (Fed. Cir. 2010). In determining questions of legal
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`standing, the Supreme Court has held, "A corporate parent which owns the shares of a subsidiary
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`does not, for that reason alone, own or have legal title to the assets of the subsidiary." Dole Food
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`Co. v. Patrickson, 538 U.S. 468, 474-75 (2003). Therefore, a parent corporation does not have
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`de facto standing to assert claims for monetary relief for infringement of a wholly-owned
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`subsidiary's patent. The parent corporation must show that it has an exclusive license in the
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`asserted patents. Spine Sols. , Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1317-
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`18 (Fed. Cir. 2010), abrogated on other grounds by Halo Elecs. , Inc. v. Pulse Elecs., 136 S. Ct.
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`1923 (2016). A parent corporation, however, may have standing to pursue equitable relief where
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`the parent corporation is the equitable owner of the patents-in-suit. Arachnid, Inc. v. Merit
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`Indus. , Inc., 939 F.2d 1574, 1580 (Fed. Cir. 1991); Hologic, Inc. v. Minerva Surgical, Inc., 163
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`F. Supp. 3d 118, 121-22 (D. Del. 2016).
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`"To be an exclusive licensee for standing purposes, a party must have received, not only
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`the right to practice the invention within a given territory, but also the patentee's express or
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`implied promise that others shall be excluded from practicing the invention within that territory
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`as well." Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1552 (Fed. Cir. 1995). "[A]n
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`exclusive license need not be in writing for the exclusive licensee to have standing to sue with
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`the patentee as a co-plaintiff." Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288 F. App'x 697,
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`705 (Fed. Cir. 2008). A promise of exclusivity is generally "the right to exclude others from
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`making, using, or selling the patented invention." Id. An exclusive licensee does not need to "be
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`the only party with the ability to license the patent." WiAV, 631 F .3d at 1266.
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`7
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 9 of 14 PageID #: 6107
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`It is undisputed that there is no express exclusive license from Plaintiff ICN to Plaintiff
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`Alarm.com. Therefore, to determine whether Plaintiff Alarm.com has legal standing, the Court
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`must ask whether it has an implied exclusive license. There is no dispute between the parties
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`that Plaintiff ICN is wholly-owned by Plaintiff Alarm.com. The President of both Alarm.com
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`and ICN declared that "ICN was set-up as a holding company" and does not "have an existence
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`separate from Alarm.com, in that Alarm.com controls all ofICN's business." (D.I. 186 ,r 3).2
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`He also declared, "Alarm.com has the exclusive right to grant ( or not to grant) any licenses to the
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`patents-in-suit." (Id.). This statement is also supported by non-testimonial evidence. Plaintiff
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`Alarm.com "has operated as an exclusive licensee, distributing products made pursuant to the
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`patents-in-suit and seeking to enforce its rights under the patents." Aspex, 288 F. App'x at 706.
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`Alarm.com has participated in all licensing agreements for the patents-in-suit. The license
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`agreement with iControl and Comcast refers to Plaintiff Alarm.com as the grantor of the license
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`to Comcast and is signed by representatives of both Plaintiffs. (D.I. 183 at 125 ,r 1.71, 128 ,r 3.1,
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`150). The settlement and license agreement with Honeywell both refers to Plaintiff Alarm.com
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`as the grantor of the license of the patents-in-suit (id. at 156) and as the "exclusive and sole
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`owner of all right, title, and interest in and to the Licensed Patents." (Id. at 159). This agreement
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`was solely signed by Plaintiff Alarm.com without any signature on behalf of Plaintiff lCN. (Id.
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`at 165).
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`There are no disputed facts underlying the determination of whether Plaintiff Alarm.com
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`has an implied exclusive license from Plaintiff ICN. The undisputed facts clearly indicate that
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`2 Defendant argues that these statements were introduced by Plaintiff to create a material dispute of fact because the
`statements are factually inconsistent with Mr. Trundle's deposition. (D.1. 208 at 31: 10-12). The Court disagrees.
`Mr. Trundle's declaration merely expands on his more casual statements made at deposition but is not clearly
`inconsistent with his deposition statements. Therefore, the declaration does not create a dispute of material fact as
`Defendant has not introduced any evidence contradicting the declaration.
`8
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 10 of 14 PageID #: 6108
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`there was such an implied exclusive license. As such, Plaintiff Alarm.com has standing to sue
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`for both equitable and monetary relief. Defendant's Motion for Summary Judgment on Plaintiff
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`Alarm.corn's standing is DENIED.
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`C. Lost Profits
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`Defendant asserts that even if Plaintiff Alarm.com has standing to sue for lost profits, it
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`cannot pursue its own lost profits prior to Plaintiff ICN's acquisition of the patents-in-suit. (D.I.
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`176 at 22). Plaintiffs argue that Plaintiff Alarm.com may seek its own lost profits from the date
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`the Asset Purchase Agreement was signed. (D.I. 182 at 29). The parties agree that there are no
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`material factual disputes regarding this issue. (D.I. 207). For the following reasons, I find that
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`Plaintiff Alarm.com may not recover its own lost profits prior to March 8, 2017, the date that
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`Plaintiff ICN acquired the patents-in-suit.
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`A plaintiff may recover pre-assignment damages, including lost profits, where "the
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`assignment of a patent is coupled with an assignment of a right of action for past infringements."
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`Arachnid, 939 F.2d at 1579 n.7. Because "[i]nfringement ... harms only the owner of the patent
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`at the time of the infringing act," a patentee may only assign the right to recovery for the injury it
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`suffered at the time of the infringement. Minco, Inc. v. Combustion Eng'g, Inc., 95 F.3d 1109,
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`1117 (Fed. Cir. 1996). However, whether a plaintiff "can recover its own purported pre(cid:173)
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`Assignment lost profits damages, apart from any damages that were assignable (and assigned)" is
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`a different question. WL. Gore & Assocs., Inc. v. C.R. Bard, Inc., 198 F. Supp. 3d 366, 379 (D.
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`Del. 2016). Plaintiff asserts that the Minco case, where the court allowed Minco to recover its
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`own pre-assignment lost profits, dictates that Plaintiff Alarm.com be allowed to recover its pre(cid:173)
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`assignment lost profits. However, the court in Minco never addressed the specific issue of what
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`pre-assignment profits were available; the issue was not raised. 95 F .3d at 1119 ( defendant only
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 11 of 14 PageID #: 6109
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`challenged district court's lost profit finding on issue of non-infringing alternatives).
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`Additionally, this Court find the rationale in WL. Gore that a party may "only assign damages
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`claims it did have" convincing. 198 F. Supp. at 380. In that case, the patent assignor, GEH, was
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`a non-practicing, independent subsidiary of the patent assignee, Gore. Id. The court determined
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`that pre-assignment, "GEH had no legal basis to recover lost profit damages arising from Gore' s
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`lost sales" and therefore, Gore could not recover its own lost profits damages. Id.
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`Here, it is undisputed that the Patent Assignment Agreement explicitly assigned Plaintiff
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`ICN the right to seek damages for past infringement. (D.1. 177, Ex. 10, l(c)). Through its
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`implied exclusive license from ICN, Alarm.com also enjoys that right. However, iControl could
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`not have assigned the right to Plaintiff Alarm.corn's pre-assignment lost profits damages because
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`iControl had no legal rights to Plaintiff Alarm.corn's sales. Plaintiff Alarm.corn's pre(cid:173)
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`assignment sales of products embodying the patents-in-suit had no positive economic impact on
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`iControl. In fact, before this suit was instituted, iControl sued Alarm.com for infringement of
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`these same patents. Therefore, Plaintiffs cannot seek their own purported pre-assignment lost
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`profits damages, as the right to those damages could not have been assigned by iControl.
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`Moreover, Plaintiffs' argument that the Asset Purchase Agreement gave Plaintiff
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`Alarm.com sufficient exclusionary rights such that it can now recover its own lost profits for that
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`period is unavailing. The Asset Purchase Agreement merely settled that Plaintiff Alarm.com
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`would gain exclusionary rights in the patent at some future time. Plaintiffs point to the provision
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`prohibiting iControl from settling this suit. However, a contractual provision that the patentee
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`not settle a suit for damages which will, at some point in the future, be assigned to the Plaintiff is
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`not sufficient. The Purchase Agreement did not grant Plaintiffs the right to immediately begin
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`enforcing exclusionary rights. It did not entitle Plaintiffs to join this lawsuit at that time.
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`10
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 12 of 14 PageID #: 6110
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`Plaintiffs were only permitted to replace iControl once the assignment of the patents-in-suit was
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`complete. The prohibition on settlement merely allowed Plaintiffs to protect its future right to
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`pursue iControl's lost profits-it did not create a new right for Plaintiffs to seek their own lost
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`profits for the period that the sale was pending. Thus, as a matter of law, Plaintiff Alarm.com
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`may not recover its own lost profits before March 7, 2018. Defendant's Motion for Summary
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`Judgment as to pre-assignment lost profits is GRANTED.
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`D. Indirect Infringement Liability
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`Defendant argues that there is no evidence sufficient to create a triable issue of fact that
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`Defendant either had pre-suit knowledge of the patents-in-suit or was willfully blind to the
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`existence of the patents. (D.I. 176 at 28). Plaintiffs, in response, argue that there are material
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`disputed facts as to whether Defendant was willfully blind. (D.I. 182 at 34). For the following
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`reasons, I determine that there is no pre-suit liability for indirect infringement of the patents-in(cid:173)
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`suit.
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`Liability for indirect infringement requires that the infringer have knowledge of or be
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`willfully blind to both the patents and infringement. Global-Tech Appliances, Inc. v. SEES.A.,
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`563 U.S. 754, 766 (2011). Patentees may not "collect[] damages related to indirect infringement
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`for any pre-knowledge conduct." Walker Digital LLC v. Facebook, Inc., 852 F. Supp. 2d 559,
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`565 (D. Del. 2012). Where pre-suit knowledge of the patents or infringement cannot be shown, a
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`patentee may still recover pre-suit damages if the patentee can show that the infringer was
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`willfully blind to the patent or infringement. "[A] willfully blind defendant is one who takes
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`deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be
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`said to have known the critical facts." Global-Tech, 563 U.S. at 769. "Willful blindness ...
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`surpasses recklessness and negligence .... [A] reckless defendant is one who merely knows of a
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 13 of 14 PageID #: 6111
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`substantial and unjustified risk of wrongdoing, and a negligent defendant is one who should have
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`known of a similar risk but, in fact, did not." Id. Therefore, a defendant is not willfully blind if
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`it merely "should have known" of the risk of indirect infringement.
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`Plaintiffs point to three pieces of evidence: 1) testimony of iControl's former CEO Paul
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`Dawes that he believed Defendant was aware of the patents given how closely Defendant copied
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`what iControl was doing (D.I. 183, Ex. 5 at 104:9-105:10); 2) Defendant had access to an
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`embodiment of the '931, '619, and '844 patents between 2008 and 2009 (D.I. 182 at 34); and 3)
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`Defendant's CEO "admitted that he knew of the 2013 lawsuit between Alarm.com and iControl
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`involving the '931, '619, and '844 patents" and did nothing to investigate the lawsuit. (Id. at 34-
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`35).
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`This evidence at most frames Defendant as a "reckless or negligent defendant-not a
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`willfully deliberate one." Apeldyn Corp. v. AU Optronics Corp., 831 F. Supp. 2d 817, 831 (D.
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`Del. 2011). First, testimony from a third-party with no direct "knowledge of what [Defendant]
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`did or didn't do" that the Defendant "should have known" of the patents-in-suit is not enough. 3
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`(D.I. 198 at 15, 15 n.3). Even if this evidence were more than mere suspicion, it would only
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`show negligence-that the Defendant should have known of the patents, not that the Defendant
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`was willfully blind to the existence of the patents. It cannot be the case that after the Supreme
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`Court rejected "should have known" as sufficient to prove indirect infringement that proof of
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`"should have known" is sufficient to show "willful blindness." Second, the access to a product
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`embodying the '931, '619, and '844 patents is also insufficient to indicate that Defendant
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`willfully blinded themselves to the existence of a patent. The earliest issued patent of these three
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`3 It also would be inadmissible. It is not based on personal knowledge and it is not offered as expert witness
`testimony.
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`Case 1:15-cv-00807-RGA Document 214 Filed 12/21/18 Page 14 of 14 PageID #: 6112
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`patents issued in 2011. Having access to a product two to three years before the patent issued
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`cannot create an inference of willful blindness absent additional evidence.
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`Finally, Defendant's awareness that a competitor is being sued for infringement and a
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`failure to investigate that lawsuit is not enough to show willful blindness. While Plaintiffs at oral
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`argument stated that the product at issue in that lawsuit was "incredibly similar" to the
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`Defendant's own product, this cannot raise an inference of willful blindness. Like in Apeldyn,
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`where the defendant "would not initiate the collection of patents issued to other companies" with
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`competing technology, 831 F. Supp. 2d at 831 (cleaned up), here, the mere fact that a competitor
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`with similar technology was sued for infringement cannot trigger a duty to investigate the lawsuit
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`or otherwise be held to be willfully blind. For willful blindness to exist, "the defendant must
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`subjectively believe that there is a high probability that" the induced acts are infringing. Global(cid:173)
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`Tech , 563 U.S. at 769. The evidence Plaintiffs present does not permit this conclusion.
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`Therefore, Defendant's Motion for Summary Judgment as to pre-suit liability for induced
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`infringement is GRANTED.
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`IV.
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`Conclusion
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`For the foregoing reasons, the Court GRANTS Defendant's Motion for Summary
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`Judgment as to pre-assignment lost profits and pre-suit liability for indirect infringement of the
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`patents-in-suit and DENIES Defendant' s Motion as to indefiniteness of the term "objects" and
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`Plaintiff Alarm.corn's standing.
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`An accompanying order will be entered.
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