Case 1:23-cv-00842-JCG Document 62 Filed 05/20/24 Page 1 of 25 PageID #: 667
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`TECHNOPROBE S.P.A.,
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`v.
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`FORMFACTOR, INC.,
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`Defendant.
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`Court No. 1:23-cv-00842-JCG
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`OPINION AND ORDER
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`This matter involves patent infringement claims filed by Plaintiff
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`Technoprobe, S.p.A (“Plaintiff” or “Technoprobe”) against Defendant FormFactor,
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`Inc. (“Defendant” or “FormFactor”) alleging infringement of Technoprobe’s guide
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`plate technology. Before the Court is Defendant’s Partial Motion to Dismiss
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`Plaintiff’s Amended Complaint (“Motion”) on the grounds that the Amended
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`Complaint does not allege sufficient facts to support Plaintiff’s claims of indirect
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`and willful infringement and false advertising. Def.’s Part. Mot. Dismiss Pl.’s Am.
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`Compl. (D.I. 17); see also Am. Compl. (D.I. 13). Plaintiff filed Plaintiff’s
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`Opposition to Defendant’s Partial Motion to Dismiss (“Pl.’s Br.”) (D.I. 24).
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`Defendant filed Defendant’s Reply Brief in Support of Defendant’s Partial Motion
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`to Dismiss Plaintiff’s Amended Complaint (D.I. 27). Plaintiff filed Plaintiff’s Sur-
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`Case 1:23-cv-00842-JCG Document 62 Filed 05/20/24 Page 2 of 25 PageID #: 668
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`Reply in Opposition to Defendant’s Partial Motion to Dismiss (D.I. 31). For the
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`Page 2
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`reasons discussed below, Defendant’s Partial Motion to Dismiss is denied.
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`I.
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`Background
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`Plaintiff and Defendant both design, manufacture, promote, and sell
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`electronic probe cards used in the testing of electronic semiconductor chips. Am.
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`Compl. ¶¶ 4–5, 10, 20 at 2–3, 4, 6. Plaintiff owns the right, title, and interest in
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`Patent No. 11,035,885 (“’885 Patent”), which was granted for guide plate
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`technology improving the resiliency of probe cards to spikes in electrical voltage
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`and currents by grouping individual pins across electrically conductive layers. Id.
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`¶¶ 21, 37–38 at 7, 14; see also id. at Ex. A (“’885 Patent”) (D.I. 13-1). The ’885
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`Patent was granted on June 15, 2021. Id. ¶¶ 21, 37 at 7, 14. Defendant promotes
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`and sells probe cards incorporating guide plate technology that Plaintiff contends
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`infringe the ’885 Patent, such as the “Apollo,” “Kepler,” or “QiLin” probe cards
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`(“Accused Products”). See id. ¶¶ 23, 24, 63 at 8, 24.
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`Both Plaintiff and Defendant attended and promoted their respective
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`products at the SWTest 2023 Conference in June 2023. See id. ¶¶ 25–31 at 9–12.
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`During the conference, Plaintiff delivered a presentation regarding its guide plate
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`technology, which included the phrase “Technoprobe Patented solution.” Id. ¶ 26
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`at 9–10; id. at Ex. H at 22. The presentation included an example of the guide
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`plate technology and explained that the technology allowed for an increased
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`current carrying capability. Id. ¶¶ 26–27 at 9–10. At least one representative of
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`Defendant was present for Plaintiff’s presentation. Id. ¶ 27 at 10.
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`Defendant also promoted its products using guide plate technology at the
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`SWTest 2023 Conference. Id. ¶¶ 28–31 at 10–12. Defendant’s public
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`presentations at the conference included a slide comparing the current carrying
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`capability of Defendant’s current probes with that of “previous generation probes.”
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`Id. ¶¶ 28–31, 43 at 10–11, 16–18. Defendant claimed that its new generation of
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`probes offered a greater than 50% improvement in current carrying capability over
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`the prior generation probes and that the probes could “[i]mprove [e]ffective
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`[current carrying capability] by 65% depending on the probe architecture.” Id.
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`¶¶ 49, 55–56 at 19–20, 22; see also id. at Ex. E.
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`In addition to promoting its probe cards at the SWTest 2023 Conference,
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`Defendant publicly promoted and sold its products to customers through its
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`website. Id. ¶¶ 32, 35–36 at 12–14. Defendant made its promotional slides from
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`the SWTest 2023 Conference available to customers on its website. Id. ¶ 34 at 13.
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`II. Legal Standard
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`Federal Rule of Civil Procedure 8(a) requires that pleadings contain a short
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`and plain statement of the claim showing that the pleader is entitled to relief. Fed.
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`R. Civ. P. 8(a)(1). If pleadings fail to state a claim, in whole or in part, on which a
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`court may grant relief, a defendant may seek to dismiss a complaint under Federal
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`Rule of Civil Procedure 12(b)(6). Fed. R. Civ. P. 12(b)(6). “To survive a motion
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`Page 4
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`to dismiss, a complaint must contain sufficient factual matter, accepted as true, to
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`‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S.
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`662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
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`“A claim has facial plausibility when the plaintiff pleads factual content that allows
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`the court to draw the reasonable inference that the defendant is liable for the
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`misconduct alleged.” Id. Plausibility requires “more than a sheer possibility that a
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`defendant has acted unlawfully.” Id. In considering a motion to dismiss, the Court
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`must assume the factual allegations contained in the complaint to be true and draw
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`all reasonable inferences in favor of the non-moving party. Twombly, 550 U.S.
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`555–56. However, “[t]hreadbare recitals of the elements of a cause of action,
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`supported by mere conclusory statements, do not suffice” to state a claim. Iqbal,
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`556 U.S. at 679.
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`In patent infringement cases, allegations of infringement are governed by the
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`Iqbal/Twombly pleading standard. Golden v. Apple Inc., 819 F. App’x 930, 930–
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`31 (Fed. Cir. 2020). There must be some factual allegations that, when taken as
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`true, articulate why it is plausible that the accused product infringes the patent
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`claim. Bot M8 LLC v. Sony Corp., 4 F.4th 1342, 1353 (Fed. Cir. 2021).
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`III. Discussion
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`Page 5
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`A.
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`Indirect and Willful Infringement of the ’885 Patent
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`Plaintiff’s Amended Complaint alleges that Defendant indirectly and
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`willfully infringed “at least claim 1 of the ’885 Patent by inducing third parties to
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`sell, promote, offer to sell, make, use, and/or import the Accused Products in the
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`United States.” Am. Compl. at ¶¶ 75–80 at 28–29. Defendant seeks dismissal of
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`these claims, arguing that Defendant lacked the necessary pre-suit or post-suit
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`knowledge of the patent or potential infringement. Opening Br. Supp. Def.’s Part.
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`Mot. Dismiss Pl.’s Am. Compl. (“Def.’s Br.”) at 7–14 (D.I. 18).
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`1.
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`Induced Infringement
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`Plaintiff filed pre- and post-suit induced infringement claims, alleging that
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`Defendant had notice of its infringement of the ’885 Patent since “as early as June
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`7, 2023 or the filing or service of Technoprobe’s original Complaint in this action,”
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`which occurred in August 2023. Am. Compl. ¶¶ 79–80, 82 at 29–30.
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`A plaintiff can prevail on claims of induced infringement only if it first
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`establishes direct infringement. See Limelight Networks, Inc. v. Akamai Techs.,
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`Inc., 572 U.S. 915, 921 (2014) (“[I]nducement liability may arise if, but only if,
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`there is direct infringement.” (internal quotation and citation omitted)). Defendant
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`does not argue in this Rule 12(b)(6) motion that Plaintiff failed to state a direct
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`infringement claim on which relief can be granted for the ’885 Patent, so for the
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`purposes of this motion, the Court presumes that Technoprobe has plausibly pled
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`Page 6
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`direct infringement of the ’885 Patent.
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`To plead induced infringement under 35 U.S.C. § 271(b), “a complaint must
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`plead facts plausibly showing that the accused infringer specifically intended
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`another party to infringe the patent and knew that the other party’s acts constituted
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`infringement.” Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed.
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`Cir. 2017) (internal quotations and citations omitted); see also 35 U.S.C. § 271(b)
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`(“Whoever actively induces infringement of a patent shall be liable as an
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`infringer.”). This requires a plaintiff to allege facts supporting a reasonable
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`inference that the defendant had knowledge of the patent-in-suit. Global-Tech
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`Appliances, Inc. v. SEB S.A., 563 U.S. 754, 764–66 (2011); see also bioMérieux,
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`S.A. v. Hologic, Inc., No. 18-cv-00021-LPS, 2018 WL 4603267, at *5 (D. Del.
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`Sept. 25, 2018). “[U]nlike direct infringement, the patentee must show that the
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`accused inducer took an affirmative act to encourage infringement with the
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`knowledge that the induced acts constitute patent infringement.” Microsoft Corp.
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`v. DataTern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2014) (citing Global-Tech
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`Appliances, 563 U.S. at 764–66). Without knowledge of infringement, there is not
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`enough to establish liability for induced infringement. See Global-Tech
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`Appliances, 563 U.S. at 765–66. If actual knowledge is not adequately pled, a
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`patentee can establish knowledge of patent infringement by showing that the
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`defendant was willfully blind—i.e., by showing that the defendant (1) subjectively
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`believed that there was a high probability that the induced acts constituted
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`infringement and (2) took deliberate actions to avoid learning of that fact. Id. at
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`769.
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`Specific intent is a distinct element from the knowing inducement of
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`infringing acts. “A party asserting a claim of induced infringement must plead
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`facts plausibly demonstrating that there has been direct infringement, and that ‘the
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`alleged inducer knew of the patent, knowingly induced the infringing acts, and
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`possessed a specific intent to encourage another’s infringement of the patent.’”
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`Tonal Sys., Inc. v. ICON Health & Fitness, Inc., No. 20-cv-01197-LPS, 2021 WL
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`1785072, at *3 (D. Del. May 5, 2021) (quoting Vita-Mix Corp. v. Basic Holding,
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`Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009)).
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`a.
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`Pre-Suit Claim
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`The Amended Complaint alleges that “FormFactor has known since at least
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`June 7, 2023 at the SWTest 2023 [C]onference that its probe cards implementing
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`its advertised ‘Metallized Guide Plate’ technology infringed Technoprobe’s
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`intellectual property.” Am. Compl. ¶ 79 at 29. The Amended Complaint states
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`that “[a]t least one FormFactor representative, such as David Raschko, attended
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`Technoprobe’s presentation with [Advanced Micro Devices] at SWTest 2023
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`wherein Technoprobe specifically explained that this technology was a
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`‘Technoprobe Patented solution,’” and “[d]espite learning that Technoprobe has
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`patented technology relating to metallized guide plates for improving [current
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`carrying capability], FormFactor proceeded with either direct knowledge of the
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`’885 [P]atent and its infringement or willfully blind to the existence of the ’885
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`[P]atent and its infringement.” Id.
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`Plaintiff’s allegation that Defendant had pre-suit knowledge of the ’885
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`Patent and the potential for infringement is based on the belief that Defendant
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`acquired the knowledge through Plaintiff’s SWTest 2023 Conference presentation
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`or the Parties’ status as competitors in the same industry. Am. Compl. ¶¶ 2, 25–31,
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`77–79 at 1–2, 9–12, 28–29. Plaintiff pled that at least one representative of
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`Defendant was present at the presentation, which included, “an embodiment of the
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`patented guide plate technology, along with the text ‘Technoprobe Patented
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`solution.’” Id. ¶¶ 26, 79 at 9–10, 29, Ex. H.
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`Defendant contends that Plaintiff has not sufficiently pled facts supporting
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`an inference that Defendant gained knowledge of the specific patent in-suit during
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`the SWTest 2023 Conference. Def.’s Br. at 9–10. Defendant argues that
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`Plaintiff’s reference to a public presentation and the general statement
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`“Technoprobe Patented solution” was not specific enough to establish knowledge
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`of the ’885 Patent. Id. Defendant asserts that because Plaintiff “received patent
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`protection in the United States and other countries,” the language “Technoprobe
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`Patented solution” did not clearly refer to a U.S. patent. Id. at 10 (quoting Am.
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`Page 9
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`Compl. ¶ 4 at 2–3).
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`Though general references to discussions or presentations might not provide
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`sufficient knowledge of a particular patent to support an induced infringement
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`claim, see Intellectual Ventures I LLC v. Toshiba Corp., No. 13-cv-04530-SLR-
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`SRF, 2015 WL 4916789, at *3 (D. Del. Aug. 17, 2015), Plaintiff’s presentation
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`provided enough context to reasonably conclude that the guide plate technology
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`was subject to a patent. The text “Technoprobe Patented solution” was displayed
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`prominently at the top of a slide that included a diagram of the product architecture
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`and language describing the resulting increased current carrying capacity of the
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`probe. Am. Compl. ¶ 26 at 9–10; id. at Ex. H. Those in attendance at Plaintiff’s
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`presentation, including Defendant’s representative, should have been on notice that
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`the guide plate technology being presented was subject to patent protection.
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`In the Amended Complaint, Plaintiff identifies Defendant as its “direct,”
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`“largest,” and “closest” competitor. Id. ¶¶ 3, 20, 31, 45 at 2, 6, 12, 18. Given the
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`rapidly changing nature of technology markets, the Court does not accept the
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`position that participation in a specialized market is alone sufficient to establish
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`knowledge of a particular patent. See EON Corp. IP Holding LLC v. FLO TV
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`Inc., 802 F. Supp. 2d 527, 533 (D. Del. 2011). Defendant was not a passive
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`competitor in the market in this case. By attending Plaintiff’s SWTest 2023
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`Conference presentation, Defendant took an active step in observing the activities
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`Page 10
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`of Plaintiff and put itself in a position to know of the patented technology.
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`Considering the facts alleged in the Amended Complaint in their totality and in the
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`light most favorable to the non-movant, the Court concludes that Plaintiff has
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`adequately pled facts supporting an inference that Defendant had pre-suit
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`knowledge of the ’885 Patent.
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`Plaintiff contends that, despite having actual or constructive knowledge of
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`the ’885 Patent, Defendant maintained distribution and sales agreements with
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`third-party distributors and customers for the Accused Products. Am. Compl. ¶ 75
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`at 28. Plaintiff alleges that Defendant “actively instructs, encourages, and/or aids”
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`infringement of the ’885 Patent “through various acts, including instructing and
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`training its distributors and customers to use one or more of the Accused Products
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`in a manner covered by at least claim 1 of the ’885 patent.” Id. ¶ 76 at 28. As an
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`example, the Amended Complaint notes that Defendant’s SWTest 2023
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`Conference presentation, which is available on Defendant’s website, “repeatedly
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`promotes the [current carrying capability] benefits of using Technoprobe’s
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`patented solution to both consumers and other industry members who attended
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`SWTest 2023.” Id. ¶ 77 at 29. Defendant counters that Plaintiff’s allegations are
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`“unsupported conclusions and unwarranted inferences” and that the Amended
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`Complaint does not allege any actual facts about distribution agreements or
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`Page 11
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`Defendant’s intent to infringe the ’885 Patent. Def.’s Br. at 12–13.
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`The U.S. Supreme Court has explained that:
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`[e]vidence of active steps . . . taken to encourage direct infringement,
`such as advertising an infringing use or instructing how to engage in an
`infringing use, show an affirmative intent that the product be used to
`infringe, and a showing that infringement was encouraged overcomes
`the law’s reluctance to find liability when a defendant merely sells a
`commercial product suitable for some lawful use.
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`Metro-Goldwyn Studios Inc, v. Grokster, Ltd., 545 U.S. 913, 936 (2005). The
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`Amended Complaint does not allege that Defendant instructed its customers and
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`distributors to violate the ’885 Patent, but alleges sufficient facts to plausibly show
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`that despite being aware that the Accused Products may infringe the ’885 Patent,
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`Defendant continued to promote the use of the infringing technology and the
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`benefits of increased current carrying capability. Accepting the allegations as true
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`and drawing all inferences in favor of the non-moving Party, the Court concludes
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`that Plaintiff has sufficiently pled facts showing specific intent to infringe and,
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`therefore, that the Amended Complaint contains sufficient facts to support a pre-
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`suit claim for induced infringement.
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`b.
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`Post-Suit Claim
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`Even though a claim for pre-suit induced infringement is plausibly pled, the
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`Court will address the post-suit claim for induced infringement. The Parties
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`dispute whether post-suit knowledge may support claims of induced infringement
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`Page 12
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`after the filing of the complaint. Def.’s Br. at 13–15; Pl.’s Br. at 6–10. This issue
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`generally arises when an amended complaint is filed, with the dispute over whether
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`the allegations of knowledge and continuing infringement refer, at a minimum, to
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`the period between the filing of the original complaint and the filing of the
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`amended complaint.
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`The Court takes the approach that pre-filing knowledge is not required to
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`state a claim for inducement. See Clouding IP, LLC v. Amazon.com, Inc.
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`(“Clouding IP”), Nos. 12-cv-00641-LPS, 12-cv-00642-LPS, 12-cv-00675-LPS,
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`2013 WL 2293452, at *3 (D. Del. May 24, 2013); DoDots Licensing Sols. LLC v.
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`Lenovo Holding Co., Inc. (“DoDots”), No. 18-cv-00098-MN, 2019 WL 3069773,
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`at *3 (D. Del. July 12, 2019) (concluding that induced infringement claims based
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`on post-suit conduct are permissible). The complaint can be the source of the
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`knowledge required to sustain claims of induced infringement occurring after the
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`filing date and can provide sufficient knowledge of the patents-in-suit for purposes
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`of stating a claim for indirect infringement after an amended complaint is filed.
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`See Groove Digital, Inc. v. Jam City, Inc., No. 18-cv-01331-RGA, 2019 WL
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`351254, at *4 (D. Del. Jan. 29, 2019); Walker Digital, LLC v. Facebook, Inc., 852
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`F. Supp. 2d 559, 565 (D. Del. 2012) (“In sum, if a complaint sufficiently identifies,
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`for purposes of Rule 8, the patent at issue and the allegedly infringing conduct, a
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`defendant’s receipt of the complaint and decision to continue its conduct despite
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`Page 13
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`the knowledge gleaned from the complaint satisfies the requirements of Global–
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`Tech.”); SoftView LLC v. Apple Inc., No. 10-cv-00389-LPS, 2012 WL 3061027,
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`at *7 (D. Del. July 26, 2012) (“An accused infringer is on notice of the patent(s)-
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`in-suit once an initial pleading identifies the patents-in-suit, and a patentee that
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`successfully proves the remaining legal elements of indirect infringement is
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`entitled to recover for any post-filing indirect infringement of those patents.”).
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`The complaint alone cannot operate to establish knowledge, however,
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`without being amended. See Wrinkl, Inc. v. Facebook, Inc., No. 20-cv-01345-
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`RGA, 2021 WL 4477022, at *6–7 (D. Del. Sept. 30, 2021); Helios Streaming, LLC
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`v. Vudu, Inc., No. 19-cv-01792-CFC-SRF, 2020 WL 2332045, at *4–5 (D. Del.
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`May 11, 2020), report and recommendation adopted, 2020 WL 3167641 (D. Del.
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`June 15, 2020) (stating that this district addresses the sufficiency of amended
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`pleadings for post-filing knowledge of inducement and not the original complaint).
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`Plaintiff filed its original Complaint on August 4, 2023. Compl. (D.I. 1).
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`The Complaint identified the ’885 Patent and Plaintiff’s belief that Defendant was
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`infringing the ’885 Patent. Plaintiff later filed an Amended Complaint on October
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`11, 2023, further explaining its allegations of indirect and willful infringement.
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`Am. Compl. Because the Court accepts that a complaint is sufficient for post-suit
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`knowledge when superseded by an amended complaint, Plaintiff’s original
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`complaint provides sufficient notice to support a post-suit indirect infringement
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`Page 14
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`claim.
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`2. Willful Infringement
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`Plaintiff filed pre- and post-suit willful infringement claims alleging that
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`Defendant had notice of its infringement of the ’885 Patent since “at least as early
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`as June 7, 2023 or the filing or service of Technoprobe’s original Complaint in this
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`action.” Am. Compl. ¶¶ 79, 80, 82 at 29–30. Defendant argues that it lacked the
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`necessary pre-suit or post-suit knowledge of the patent or potential infringement.
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`Def.’s Br. at 7–15. Defendant further contends that Plaintiff has not pled willful
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`infringement because it has not alleged facts supporting an inference that
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`Defendant’s conduct was egregious. Id. at 15–16.
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`Under 35 U.S.C. § 284, the Court may increase the amount of damages
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`assessed by up to three times. 35 U.S.C. § 284. The U.S. Supreme Court has
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`observed that enhanced damages:
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`are not to be meted out in a typical infringement case, but are instead
`designed as a “punitive” or “vindictive” sanction for egregious
`infringement behavior. The sort of conduct warranting enhanced
`damages has been variously described in our cases as willful, wanton,
`malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—
`indeed—characteristic of a pirate.
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`Halo Elecs., Inc. v. Pulse Elecs. Inc. (“Halo”), 579 U.S. 93, 104–05 (2016).
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`For willful infringement claims, “the patentee must allege facts in its
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`pleading plausibly demonstrating that the accused infringer had committed
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`subjective willful infringement as of the date of the filing of the willful
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`infringement claim.” Välinge Innovation AB v. Halstead New England Corp., No.
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`16-cv-01082-LPS, 2018 WL 2411218, at *10–12 (D. Del. May 29, 2018), report
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`and recommendation adopted, 2018 WL 11013901 (D. Del. Nov. 6, 2018). “The
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`subjective willfulness of a patent infringer, intentional or knowing, may warrant
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`enhanced damages, without regard to whether his infringement was objectively
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`reckless.” Halo, 579 U.S. at 105; see also WBIP, LLC v. Kohler Co., 829 F.3d
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`1317, 1341 (Fed. Cir. 2016). Subjective willfulness may be found when “the risk
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`of infringement ‘was either known or so obvious that it should have been known to
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`the accused infringer.’” Halo, 579 U.S. at 101 (quoting In re Seagate Tech., LLC,
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`497 F.3d 1360, 1371 (Fed. Cir. 2007)).
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`a.
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`Pre-Suit Claim
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`The Amended Complaint alleges that “FormFactor has known since at least
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`June 7, 2023 at the SWTest 2023 [C]onference that its probe cards implementing
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`its advertised ‘Metallized Guide Plate’ technology infringed Technoprobe’s
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`intellectual property.” Am. Compl. ¶ 79 at 29. Plaintiff alleges that, despite
`
`becoming aware of the ’885 Patent at the SWTest 2023 Conference, Defendant
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`proceeded to market and sell the Accused Products “with either direct knowledge
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`Case 1:23-cv-00842-JCG Document 62 Filed 05/20/24 Page 16 of 25 PageID #: 682
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`Court No. 1:23-cv-00842-JCG
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`of the ’885 [P]atent and its infringement or willfully blind to the existence of the
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`
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`Page 16
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`’885 [P]atent and its infringement.” Id.; see also id. at ¶ 82 at 29–30. Defendant
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`contends that Plaintiff’s reliance on general statements made during Plaintiff’s
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`public presentation and the Parties’ positions as competitors in the same market are
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`insufficient to support a claim that Defendant knew of the ’885 Patent or the
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`possibility of potential infringement. Def.’s Br. at 9–11. Defendant further argues
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`that Plaintiff’s assertions that Defendant had “no reasonable basis for believing that
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`manufacturing, importing, offering for sale, selling, and/or using the Accused
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`Products does not infringe the ’885 patent” or “believing that the ’885 patent is
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`invalid or otherwise unenforceable,” are speculative and unsupported. Def.’s Br. at
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`11–12.
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`At the pleading stage, the patentee “must allege facts in its pleading
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`plausibly demonstrating that the accused infringer had committed subjective
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`willful infringement as of the date of the filing of the willful infringement
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`claim.” Välinge Innovation AB, 2018 WL 2411218, at *10–12. This standard can
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`be distilled into three elements, that the accused infringer: (1) was aware of the
`
`patent, (2) infringed the patent after becoming aware of its existence, and (3) knew
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`or should have known that its conduct amounted to infringement. See id. at *13.
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`Plaintiff alleges that its presentation during the SWTest 2023 Conference
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`described the guide plate technology, noted the resulting increased current carrying
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`Case 1:23-cv-00842-JCG Document 62 Filed 05/20/24 Page 17 of 25 PageID #: 683
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`capability, and included the language “Technoprobe Patented solution” on the
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`
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`Page 17
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`accompanying slide. Am. Compl. ¶¶ 26–27 at 9–10. Plaintiff alleges that one or
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`more representatives of Defendant attended Plaintiff’s presentation and that
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`Defendant gave a presentation on the same technology at the conference. Id. ¶¶ 27,
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`29, 79 at 10, 11, 29. Plaintiff contends that Defendant continued to market and sell
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`the Accused Products after the SWTest 2023 Conference through its website, to
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`which slides from Defendant’s conference presentation were posted. Id. ¶¶ 32–36
`
`at 12–14.
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`Viewing all facts in the light most favorable to the non-movant, the Court
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`concludes that the Amended Complaint alleges facts plausibly showing that
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`Defendant, through actively attending Plaintiff’s SWTest 2023 Conference
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`presentation and continuing to promote and sell the Accused Products thereafter,
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`was aware of the’885 Patent and its potential infringement sufficient to support a
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`pre-suit willful infringement claim.
`
`b.
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`Post-Suit Claim
`
`Even though a claim for pre-suit willful infringement is plausibly pled, the
`
`Court will address the post-suit claim for willful infringement. The Parties dispute
`
`whether post-suit knowledge may sustain claims for willful infringement. Judges
`
`in this district have taken different views on whether a plaintiff can sufficiently
`
`plead knowledge of a patent-in-suit in an amended complaint by referring back to
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`
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`

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`Case 1:23-cv-00842-JCG Document 62 Filed 05/20/24 Page 18 of 25 PageID #: 684
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`Court No. 1:23-cv-00842-JCG
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`the notice that the accused infringer received of the patent’s existence via the filing
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`Page 18
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`
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`of a prior complaint in the same case for willful infringement claims.
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`Compare Cleveland Med. Devices Inc. v. ResMed Inc., No. 22-cv-00794-JLH,
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`2023 WL 6389628, at *6 (D. Del. Oct. 2, 2023) (Williams, J.) (concluding that the
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`complaint itself cannot serve as the basis for a defendant’s actionable knowledge
`
`for a willful infringement claim), Pact XPP Schweiz AG v. Intel Corp., No. 19-cv-
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`01006-JDW, 2023 WL 2631503, at *5 (D. Del. Mar. 24, 2023), recons. denied,
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`2023 WL 3934058 (D. Del. June 9, 2023) (Wolson, J.) (concluding that a
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`defendant’s alleged knowledge based solely on the content of that complaint or a
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`prior version of the complaint filed in the same lawsuit is insufficient for a willful
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`infringement claim), Wrinkl, Inc., 2021 WL 4477022, at *6–7 (Andrews, J.)
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`(concluding that an amended complaint can establish post-suit knowledge for
`
`indirect infringement claims but not for willful infringement claims), and
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`ZapFraud, Inc. v. Barracuda Networks, Inc., 528 F. Supp. 3d 247, 249–50 (D. Del.
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`2021) (Connolly, J.) (concluding that a “complaint itself cannot be the source of
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`the knowledge required to sustain claims of induced infringement and willfulness-
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`based enhanced damages”), with ICON Health & Fitness, Inc. v. Tonal Sys., Inc.,
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`No. 21-cv-652-LPS-CJB, 2022 WL 611249, at *3 (D. Del. Feb. 7, 2022) (Burke,
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`J.) (concluding that post-suit induced infringement and willful infringement claims
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`are permissible with knowledge of a patent-in-suit in an amended complaint),
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`

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`Case 1:23-cv-00842-JCG Document 62 Filed 05/20/24 Page 19 of 25 PageID #: 685
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`Court No. 1:23-cv-00842-JCG
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`Ravgen, Inc. v. Ariosa Diagnostics, Inc., No. 20-cv-01646-RGA-JLH, 2021 WL
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`
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`Page 19
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`3526178, at *4 (D. Del. Aug. 11, 2021) (Hall, J.) (concluding that a party may
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`maintain a claim for willful infringement made in an amended complaint if the
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`accused infringer first gained knowledge of the patent from the original
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`complaint), and Clouding IP, 2013 WL 2293452, at *4 (Stark, J.) (concluding that
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`“for purposes of pleading willful infringement, there appears to be little practical
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`difference between a pre-complaint notice letter informing a defendant about a
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`patentee’s allegation of infringement and a subsequently-superceded [sic] original
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`complaint formally alleging infringement”).
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`This Court adopts the approach that the original complaint, later superseded
`
`by the amended complaint, is sufficient to support a post-suit willful infringement
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`claim at the motion to dismiss stage. This approach follows most of the cases in
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`this district concluding that notice from a complaint is sufficient for indirect and
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`willfulness claims when an original complaint is superseded by an amended
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`complaint. See Ravgen, 2021 WL 3526178, at *2 (involving a second amended
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`complaint for post-suit willful infringement claim); DoDots, 2019 WL 3069773, at
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`*1 (involving a second amended complaint for post-suit induced infringement
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`claim); ICON Health & Fitness, 2022 WL 611249, at *1 (involving a first amended
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`complaint for pre-suit induced and willfulness claims but noted that re-pleading is
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`not necessary for post-suit claims).
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`
`
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`

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`Case 1:23-cv-00842-JCG Document 62 Filed 05/20/24 Page 20 of 25 PageID #: 686
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`Court No. 1:23-cv-00842-JCG
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`Page 20
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`This Court discerns little practical difference between a pre-complaint notice
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`letter and the filing of an original complaint that is later superseded by an amended
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`complaint. See Clouding IP, 2013 WL 2293452, at *4.
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`Because the original Complaint adequately pled direct infringement of the
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`’885 Patent, it placed Defendant on notice of the ’885 Patent and its alleged
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`infringing activity. Thus, the Court holds that the original Complaint, later
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`superseded by the Amended Complaint, is sufficient to support a post-suit willful
`
`infringement claim at the motion to dismiss stage. Because the Amended
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`Complaint adequately states that Defendant had knowledge of and had knowingly
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`infringed the ’885 Patent, Plaintiff’s post-suit willful infringement claim is
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`sufficiently pled.
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`Further, Defendant argues that Plaintiff’s willful infringement claim should
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`be dismissed because the Amended Complaint fails to allege facts to support an
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`inference that Defendant’s conduct was “‘egregious’ beyond ‘typical’
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`infringement.” Def.’s Br. at 15–16 (citing Wrinkl Inc., 2021 WL 4477022, at *7).
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`In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the
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`U.S. Supreme Court observed that “[c]onsistent with nearly two centuries of
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`enhanced damages under patent law,” the awarding of enhanced damages “shou

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