Unreported / Non-Citable
Background
KIWI Intellectual Assets Corporation sued Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. for patent infringement in the Eastern District of Texas. Samsung moved to dismiss the portions of KIWI’s complaint asserting pre-suit indirect infringement and pre-suit willful infringement.
KIWI responded that it was “not currently maintaining” those claims but opposed dismissal in an effort to preserve the possibility of developing pre-suit claims through future discovery. Samsung argued that unsupported allegations should not remain in the complaint merely because they might later benefit KIWI.
The Court’s Holding
The court granted Samsung’s motion to dismiss. Given KIWI’s representation that it was not currently pursuing the challenged claims, the court agreed with Samsung that KIWI should not have opposed the motion solely to preserve a potential right to develop pre-suit claims based on hypothetical discovery.
The court dismissed KIWI’s pre-suit indirect-infringement and pre-suit willful-infringement claims without prejudice. The order therefore removed those claims from the case without foreclosing KIWI from seeking to assert them later if procedurally permitted and supported by an adequate factual basis.
Key Takeaways
- A plaintiff cannot preserve unsupported allegations in a complaint merely because future discovery might supply a basis for them.
- KIWI’s statement that it was not currently maintaining the challenged pre-suit claims supported dismissal.
- The dismissal was without prejudice and applied only to the pre-suit indirect- and willful-infringement claims addressed by Samsung’s motion.
Why It Matters
The ruling underscores that patent plaintiffs should have a present factual basis for pre-suit knowledge and intent allegations underlying indirect- and willful-infringement claims. A speculative possibility that discovery may later support those theories does not justify leaving unsupported claims in the operative complaint.
Because the dismissal was without prejudice, the order does not resolve whether KIWI could later pursue comparable pre-suit theories upon developing sufficient factual support.