EON Corp IP Holdings LLC v. Sensus USA Inc et al

Filing 544

ORDER by Judge Edward M. Chen Granting in Part and Denying in Part Defendants' 477 479 486 490 491 Motions to Dismiss. (emcsec, COURT STAFF) (Filed on 10/1/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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EON CORP. IP HOLDINGS, LLC,

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Plaintiff,
v.

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For the Northern District of California

United States District Court

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No. C-12-1011 EMC

SENSUS USA, INC., et al.,

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ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANTS’
MOTIONS TO DISMISS

Defendants.
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(Docket Nos. 477, 479, 490, 491)
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Pending before the Court are multiple Defendants’ motions to dismiss Plaintiff EON’s

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Second Amended Complaint for failure to state a claim under Rule 12(b)(6) of the Federal Rules of

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Civil Procedure. This Court previously dismissed Plaintiff’s First Amended Complaint with leave to

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amend based on, inter alia, Plaintiff’s failure to allege adequate facts to support claims for indirect

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and willful infringement. See Docket No. 446 (minute entry), 460 (transcript of hearing). Though

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they bring separate motions, Defendants essentially argue that Plaintiff’s second amended complaint

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(“SAC”), Docket No. 456, continues to fall short of the standards for adequate pleading.

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In a hearing on September 28, 2012, all parties were represented by counsel and had the

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opportunity to give argument on the pending motions. For the reasons stated on the record, the

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Court GRANTED IN PART and DENIED IN PART Defendants’ motions to dismiss. As a brief

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summary, the Court denied the motions as to Plaintiff’s claims for indirect infringement under

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theories of contributory or induced infringement. Though the claims for indirect infringement both

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require knowledge of the patent, the Federal Circuit has recently held that post-filing knowledge is

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sufficient to meet this requirement. In re Bill of Lading Transmission and Processing System Patent

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Litigation, 681 F.3d 1323, 1345 (Fed. Cir. 2012). Plaintiff has sufficiently alleged knowledge under

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this standard. See, e.g., SAC ¶ 75. Similarly, Plaintiff has sufficiently alleged lack of substantial

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non-infringing use as required to show contributory infringement, and intent to induce as required to

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show induced infringement. See, e.g., SAC ¶ ¶ 73-75, 147-48.

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The Court granted Defendants’ motions to dismiss Plaintiff’s claim for willful infringement.

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Unlike with indirect infringement, allegations of post-filing knowledge are generally insufficient to

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make out a case for willful infringement. In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir.

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2007). Plaintiff concedes that the SAC only alleges that Defendants had knowledge as of the date of

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the original Complaint’s filing or service. Opp., Docket No. 517, at 3; see e.g. SAC ¶ 75. The
Federal Circuit has noted that post-filing knowledge may be sufficient to support a claim of willful

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For the Northern District of California

United States District Court

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infringement where a defendant violates a preliminary injunction secured by the plaintiff. Seagate,

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497 F.3d at 1374. It held, however, that a “patentee who does not attempt to stop an accused

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infringer’s activities in this manner should not be allowed to accrue enhanced damages based solely

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on the infringer’s post-filing conduct.” Id. Plaintiff has sought no such injunction here.

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For the foregoing reasons, the Court GRANTS Defendants’ motions to dismiss Plaintiff’s

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willful infringement claims without prejudice and DENIES Defendants’ motions to dismiss on all

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other grounds.

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This order disposes of Docket Nos. 477, 479, 490, and 491.

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IT IS SO ORDERED.

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Dated: October 1, 2012

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_________________________
EDWARD M. CHEN
United States District Judge

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