Richards Layton & Finger

Magistrate Judge Burke Recommends Dismissal of Indirect and Willful Infringement Claims

March 6, 2018

In Valmont Industries, Inc. v. Lindsay Corp., No. 15-042-LPS-CJB (D. Del. Jan. 22, 2018), Magistrate Judge Burke recommended that the Court grant in part Lindsay Corp.’s motion to dismiss the direct, induced, contributory, and willful infringement claims of Valmont Industries, Inc.’s amended complaint.

Although Valmont accused of infringement the combination of devices such as a tablet or smartphone as used with software sold by Lindsay—which would, as the Court noted, suggest that Lindsay’s customers, not Lindsay, directly infringed—Judge Burke regarded the allegations in the amended complaint of Lindsay’s internal use of such a combination as sufficient to state a claim for direct infringement by Lindsay.

The Court concluded that the allegations that Lindsay had knowledge of infringement based on its receipt of the original complaint were not enough to state a claim for inducement of infringement. The Court described the original complaint as having no factual allegations showing how the accused products actually infringe; in addition, all but one of the claims in the amended complaint were issued after the original complaint was filed. (For these same reasons, Judge Burke recommended that Valmont’s willful infringement claim be dismissed.) Dating from the filing of the amended complaint, however, the claim of induced infringement was found to suffice, as the Court concluded that the amended complaint detailed how the accused products practiced the asserted patent, a use alleged to have been encouraged by material on Lindsay’s website.

Judge Burke then deemed Valmont’s contributory infringement claim as failing plausibly to allege that Lindsay knew that the accused products lacked a substantial non-infringing use. According to the Court, the accused products, as described on Lindsay’s website, appeared to have alternative, non-infringing uses.

Because this was the first time the Court had reviewed the pleadings, however, Judge Burke recommended that Valmont be granted leave again to amend the complaint.

Key Point: In determining whether the allegations of the complaint stated a claim for patent infringement, Judge Burke explained that the patentee must plead facts to make it plausible that the accused products practice the limitations of at least one claim of the asserted patent.