Unreported / Non-Citable
Background
Zophonos Inc. sued Samsung for infringement of three U.S. patents. In response to an earlier motion to dismiss, Zophonos filed a First Amended Complaint (FAC) which alleged, among other things, that Samsung had pre-suit knowledge of one specific patent, U.S. Patent No. 11,900,016 (the ’016 patent).
Zophonos’s claim of pre-suit knowledge was based on a single event: during the patent prosecution for one of Samsung’s own patent applications, a USPTO patent examiner cited the ’016 patent as relevant prior art. Samsung filed a motion to dismiss Zophonos’s claims for pre-suit willful infringement and induced infringement of the ‘016 patent, arguing that an examiner’s citation, on its own, is insufficient to plausibly allege that Samsung had actual knowledge of the patent before the lawsuit was filed.
The Court’s Holding
The Court denied Samsung’s motion to dismiss. It held that Zophonos had plausibly alleged both pre-suit knowledge and willful blindness, which are necessary elements for willful and induced infringement claims. The Court reasoned that at the motion-to-dismiss stage, it must accept all of the plaintiff’s well-pleaded factual allegations as true.
Regarding pre-suit knowledge, the Court found that Zophonos’s allegation—that Samsung became aware of the ’016 patent when the examiner cited it—was a factual claim that must be taken as true. The Court noted that deciding whether the citation actually put Samsung on notice would be a factual dispute inappropriate for this stage of litigation. For the willful blindness argument, the Court found that the examiner’s citation supported a reasonable inference that Samsung knew there was a high probability the technology was patented. The allegation that Samsung continued its infringing activity after the citation supported the inference that it deliberately avoided confirming the infringement.
Key Takeaways
- A patent examiner’s citation of a patent during the prosecution of a defendant’s own application can be sufficient grounds to plausibly allege pre-suit knowledge for the purpose of surviving a Rule 12(b)(6) motion to dismiss.
- At the pleading stage, a court must accept a plaintiff’s allegation that an examiner’s citation put a defendant on notice of a patent; whether it actually did is a question of fact for a later stage.
- A defendant’s continuation of allegedly infringing activities after an examiner has cited a plaintiff’s patent can support a plausible claim of willful blindness.
Why It Matters
This opinion from the Eastern District of Texas, a prominent venue for patent litigation, provides important guidance on how patent plaintiffs can establish the knowledge requirement for willful and induced infringement claims. The ruling indicates that a defendant cannot simply ignore prior art cited by the USPTO during its own patent prosecutions. Allegations that a company knew or should have known about a patent because of an examiner’s citation are likely to survive early motions to dismiss, allowing plaintiffs to proceed to discovery on claims for enhanced damages.