Greenthread, LLC v. ON Semiconductor Corporation et al

Filing 35

MEMORANDUM ORDER: Defendants' Motion to Dismiss Greenthread's induced infringement claims (D.I. 14 ) is GRANTED. Greenthread has leave to amend, so long as it does so within fourteen days. Signed by Judge Richard G. Andrews on 11/15/2023. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

GREENTHREAD, LLC,
Plaintiff,
Civil Action No. 23-443-RGA

V.

ON SEMICONDUCTOR CORPORATION
and SEMICONDUCTOR COMPONENTS
INDUSTRIES, LLC,
Defendants.

MEMORANDUM ORDER
Before me is Defendants' Motion to Dismiss Plaintiff's Inducement of Infringement
Claim in the First Amended Complaint for Failure to State a Claim. (D.I. 14). I have considered
the parties' briefing. (D.I. 15, 16, 18).
To succeed on a claim of induced infringement, "the patentee must show, first, that there
has been direct infringement, and second, that the alleged infringer knowingly induced
infringement and possessed specific intent to encourage another's infringement." MEMC Electr.
Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005)

(cleaned up). In other words, "a plaintiff must prove the following elements: (1) direct
infringement, (2) knowing inducement of infringement, and (3) specific intent to encourage
another's infringement." LiTL LLC v. Lenovo (United States), Inc. , 2022 WL 610739, at *7 (D.
Del. Jan. 21, 2022). "To prove the second element, "knowing inducement of infringement," it
logically follows that a plaintiff must prove the following sub-elements: (a) knowledge of the
patent(s); (b) knowledge of the direct infringement of the patent(s); (c) action(s) taken to induce
infringement; (d) knowledge the action(s) would induce the direct infringement; and (e) some
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causal link between the inducing acts and the direct infringement." Id. (citations omitted). "At
the pleading stage, a plaintiff must allege facts that would allow a factfinder plausibly to
conclude each of these elements and sub-elements is satisfied." Id.
The First Amended Complaint ("FAC") (D.I. 13) is the operative complaint. Defendants
contend it contains insufficient factual allegations to show: (1) direct infringement by a third
party, (2) Defendants' knowledge of that direct infringement, and (3) Defendant's specific intent
to encourage said third party's direct infringement. (D.I. 15 at 1). I agree.
The FAC discusses Greenthread's induced infringement claim in only three paragraphs,
none of which mention direct infringement by a third party, knowledge of infringement, or
specific intent:
32.
Further, in concert with others, including ON Semiconductor authorized
distributors and customers, ON Semiconductor caused or induced infringing
accused products to be made, used, offered to be sold, sold within the United States,
and/or imported into the United States. ON Semiconductor has knowledge of the
Greenthread patents at least through the service of the Complaint.
[40, 47].
As alleged above, ON Semiconductor induced infringement of at
least one claim of [Greenthread' s patents] by designing and marketing infringing
products for sale, sue, and importation into the United States.
(D.I. 13

,r,r 32, 40, 47).

The only element addressed is Defendants' knowledge of the

Greenthread patents. Greenthread instead relies on an infringement chart analyzing infringement
of Greenthread' s asserted patents by Defendants' AR0820AT product, alleged to be an
exemplary product. 1 (D.I. 13, Ex. 4; see id.

,r,r 15, 33).

Even "viewed in the light most favorable

to the complainant," these allegations do not plausibly establish the challenged elements of

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All claims of both asserted patents are "device" claims. (See U.S. Patent No. 10,510,842, 4:456--27; U.S. Patent No. 11 ,121,222, 4:39-8 :39).
2

Greenthread' s induced infringement claim. Bell At!. Corp. v. Twombly, 550 U.S. 544, 558
(2007).
In its answering brief, Greenthread expounds on its induced infringement position. (D.I.
16 at 6-9). A party cannot use a brief to remedy deficiencies in the allegations of a complaint.
Thus, I do not need to decide whether a complaint making the allegations present in
Greenthread' s answering brief would be sufficient. All I need to decide is that it is plausible that
Greenthread' s pleading deficiencies are curable. Thus, I will grant Greenthread the opportunity
to amend its complaint.
For the reasons set forth above, Defendants' Motion to Dismiss Greenthread' s induced
infringement claims (D.I. 14) is GRANTED. Greenthread has leave to amend, so long as it does
so within fourteen days.
IT IS SO ORDERED.

Entered this )

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Qday of November, 2023