Magistrate Judge Burke Recommends Denial of Motion to Dismiss

November 11, 2015

Publication| Intellectual Property


In Elm 3DS Innovations, LLC v. SK Hynix Inc. et al, C.A. No. 13-1674-RGA (D. Del. Oct. 26, 2015), C.A. No. 14-1432-LPS-CJB (D. Del. Oct. 16, 2015), Magistrate Judge Burke recommended that defendants’ motion to dismiss claims of pre-suit induced infringement be denied in a decision labeled a “very close call.” While defendants argued that plaintiff failed to plead facts sufficient to demonstrate the requisite pre-suit knowledge and intent, the court pointed to (1) the combination of the surrounding circumstances described in plaintiff’s complaint, and (2) allegations that the patent-in-suit was well-known and often referenced in the semiconductor industry as fact, making it plausible that defendants might have been aware of the patent when issued.

Specifically, in light of various meetings between the parties, the court found that it would not be unreasonable to infer that the patent and related technology “remained on Defendants’ radar” when the patent was issued. However, the court also remarked that allegations of defendants’ knowledge of the parent patent and the “ubiquity” of the patent in defendants’ industry may not always be sufficient to survive dismissal. The court stated that even when considered together, such factors may not make pre-suit knowledge probable.

Nevertheless, considering such factors in the aggregate, the court held that plaintiff’s allegations were sufficient to survive a motion to dismiss because the allegations plausibly demonstrated that defendants had knowledge of the patent-in-suit.


Defendants have had mixed success in the District of Delaware on motion to dismiss inducement claims at the pleading state. As the Magistrate Judge noted, it can be a “close call.”

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