3D Systems, Inc. v. Formlabs, inc.

Filing 33

OPINION. Based on the conclusions set forth in this Opinion, Defendant's motion to dismiss is (1) granted with respect to Plaintiff's contributory infringement claim without prejudice and (2) denied with respect to Plaintiff's willful infringement and induced infringement claims. Plaintiff is granted leave to replead the Complaint within twenty days. It is so ordered. re: 18 MOTION to Dismiss Claims of Indirect and Willful Infringement filed by Formlabs, Inc. (Signed by Judge Robert W. Sweet on 5/9/2014) (rjm)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

------------------------------------x
3D SYSTEMS, INC.,
Plaintiff,
13 Civ. 7973
- against OPINION
FORMLABS, INC. ,
Defendant.

------------------------------------x
A P P E A RA N C E S:
Attorneys for the Plaintiff
LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
600 South Ave West
Westfield, NJ 07090
By:
Charles P. Kennedy, Esq.

Attorneys for the Defendant
--·~··---

WOLF, GREENFIELD & SACKS, P.C.
600 Atlantic Avenue
Boston, MA 02210
By: Michael A. Albert, Esq.
Gregory F. Corbett, Esq.
Nathan Speed, Esq.
Joshua J. Miller, Esq.

Sweet, D.J.

Defendant Formlabs, Inc.,

( "Formlabs" or the

"Defendant") has moved to dismiss the induced, contributory and
willful patent infringement claims alleged by Plaintiff 3D
Systems ("3D Systems," "3DS" or the "Plaintiff") in its
Complaint (the "Complaint") pursuant to Federal Rules of Civil
Procedure 12(b) (6).

Based on the conclusions set forth below,

the motion is granted in part and denied in part.

Prior Proceedings

The parties began their dispute with each other in
South Carolina where 3D Systems sued Formlabs and Kickstarter,
Inc.

("Kickstarter")

for allegedly infringing one patent owned

by 3D Systems (the "South Carolina Action") .
2; Compl.

~

26.)

After its filing,

(See Def.

Br. at

Formlabs moved to dismiss

the South Carolina Action, arguing that it had no connections to
South Carolina and that the complaint failed to adequately plead
facts to support its infringement allegations.

Prior to the

district court reaching the merits of the motion, 3D Systems
amended its complaint in the South Carolina Action and then
voluntarily dismissed its case.

(See Def. Br. at 2.)

1

Plaintiff filed the Complaint in this District on
November 8, 2013.

The Complaint alleges that Formlabs directly,

actively induced, contributorily and willfully infringed 3D
Systems' patents regarding a method of printing threedimensional objects called stereolithography.

Defendant filed the instant motion to dismiss on
December 23, 2013.
were held.

Briefing was submitted and oral arguments

The matter was marked fully submitted on January 29,

2014.

Facts Alleged In the Complaint

Because this is a motion to dismiss under Fed. R. Civ.
P. 12(b) (6),
true,

the following facts,

which this Court assumes to be

are drawn from the Complaint.

See Tellabs,

Inc.

v. Makar

Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S. Ct. 2499, 168 L.

Ed. 2d 179 (2007)

("[F]aced with a Rule 12(b) (6) motion to dismiss

courts must,

as with any motion to dismiss for failure to

plead a claim on which relief can be granted, accept all factual
allegations in the complaint as true.").

The Complaint refers to several patents held by 3D
Systems (the "patents-in-suit") for the creation and printing of
2

three-dimensional prototypes and commercial products from
digital designs

("3D printers").

3D Systems is a company that

has developed technology for the 3D printing process.
6.)

(Compl. q[

3DS' 3D printers create physical three-dimensional objects

from a liquid medium involving the application of solid imaging
techniques, including stereolithographic techniques.

(Id.

'JI 7.)

Stereolithography is a 3D printing technique that produce threedimensional models or products by curing a photo-reactive resin
with a UV laser or other power source. 1

The patents-in-suit issued to 3D Systems are the
following:

Patent No.

Title

Issue Date

5,554,336

Method And Apparatus For
Production Of Three-Dimensional
Objects By Stereolithography

9/10/1996

5,569,431

Method And Apparatus For
Production Of Three-Dimensional
Objects By Stereolithography

10/29/1996

5,609,812

Method Of Making A ThreeDimensional Object By
Stereolithography

3/11/1997

5,609,813

Method Of Making A ThreeDimensional Object By
Stereolithography

3/11/1997

5,762,856

Method For Production Of ThreeDimensional Objects By
Stereolithography

1

6/9/1998

See How Stereolithography (SLA) Works, https://thre3d.corn/how-it-works/
light-photopolyrnerization/stereolithography-sla (last visited May 9, 2014).

3

5,779,967

Method And Apparatus For
Production Of Three-Dimensional
Objects By Stereolithography

7/14/1998

5, 785, 918

Method And Apparatus For
Production Of Three-Dimensional
Objects By Stereolithography

7/28/1998

5,814,265

Method And Apparatus For
Production Of Three-Dimensional
Objects By Stereolithography

9/28/1998

3D Systems is the owner of the entire right, title and interest
in the patents-in-suit.

(Id.

CJ[

8.)

Formlabs is in the business of manufacturing and
selling systems for 30 printing, including printers that use
stereolithographic techniques.

Formlabs produces a 30 printer

that is marketed within the United States under the names "The
Form 1 30 Printer," "Kickstarter Form 1," and "The Form 1 High
Resolution Desktop 3D Printer" (the "Form 1 3D Printer").
CJ[

(Id.

10.)

Kickstarter is a funding platform for creative
projects.

(Id.

CJ[

13.)

The company allows a creator to post a

project idea online and allow backers to pledge money to bring
projects to life.

The Complaint alleges that Kickstarter has

been and continues to be a selling agent of Formlabs by offering
for sale the Form 1 3D Printer on behalf of Formlabs.

4

(Id.

CJ[CJ[

13-14.)

On or about September 26, 2012, Formlabs launched a
sales campaign with Kickstarter with a goal of raising $100,000.
(Compl.

~

15.)

When this sales campaign ended on October 26,

2012, Formlabs had been pledged $2,945,885 by 2068 backers
(Id.)

through Kickstarter.

The majority of the funds for

Formlabs were raised by Formlabs' and Kickstarter's sales of
1028 Form 1 30 Printers to be delivered from February 2013 to
April 2013.

(Id.

~

16.)

Subsequent to the sales campaign,

Formlabs and Kickstarter have consummated the sales of the 30
Printer.

(Id.

19.)

~

The Complaint alleges that Formlabs has

(i) directly

infringed at least one claim of each of the patents-in-suit
under 35 U.S.C.

§

27l(a) by making, using, offering to sell and

selling the Form 1 30 Printer in the United States

(id.

~

23);

(ii) actively induced the infringement of at least the method
claims of the patents-in-suit under 35 U.S.C.

§

27l(b) by

customers and other users of the Form 1 30 Printer through
videos and other instructional videos

(id.

~

24); and (iii)

contributorily infringed the patents-in-suit (id.

~

25.)

The

Complaint also alleges that the infringement by Formlabs has
been willful.

(Id.

~

35.)
5

Standard of Review

On

a

motion

to

dismiss

pursuant

to

Fed.

R.

Civ.

P.

12(b) (6), all factual allegations in the complaint are accepted as
true, and all inferences are drawn in favor of the pleader.
v.

Polar Molecular Corp.,

issue

is

not

whether

a

Mills

12 F.3d 1170, 1174 (2d Cir. 1993).
plaintiff

will

ultimately

"The

prevail

but

whether the claimant is entitled to offer evidence to support the
claims."

County

of

Suffolk,

N.Y.

v.

Solutions, 261 F.3d 179, 187 (2d Cir. 2001)
Inc.

v.

denied,

Town

of Darien,

56 F.3d 375,

378

First

Am.

Real

Estate

(quoting Villager Pond,
(2d Cir.

519 U.S. 808, 117 S. Ct. 50, 136 L. Ed. 2d 14

1995),

cert.

(1996)).

To survive a motion to dismiss pursuant to Rule 12 (b) ( 6) ,
"a complaint must contain sufficient factual matter,

accepted as

true, to 'state a claim to relief that is plausible on its face.'"
Ashcroft v.

Iqbal,

L. Ed. 2d 868 (2009)

556 U.S.

662,

663, 129 S. Ct. 1937, 1940, 173

(quoting Bell Atl. Corp. v. Twombly, 550 U.S.

544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007)).

This is not

intended to be an onerous burden, as plaintiffs need only allege
facts sufficient in order to "nudge[] their claims across the line
from conceivable to plausible."

Twombly,

6

550 U.S. at 570.

---

--------------------------------

The Complaint Alleges Sufficient Facts
For A Showing Of Induced Infringement

The Complaint Adequately Alleges That Defendant Had
Knowledge of the Patents-In-Suit

Under 35 U.S.C. § 27l(b), "[w]hoever actively induces
infringement of a patent shall be liable as an infringer."
U.S.C. § 27l(b).

35

"[I]nduced infringement under§ 27l(b)

requires knowledge," or willful blindness to the fact, "that the
induced acts constitute patent infringement."

Global-Tech

Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068, 2069-70,

179 L. Ed. 2d 1167

(2011).

To establish liability under section

27l(b), a patent holder must prove that once the defendants knew
of the patent, they "actively and knowingly aid[ed] and
abett[ed] another's direct infringement."
Calco, Ltd., 850 F.2d 660,

668

Water Tech. Corp. v.

(Fed. Cir. 1988).

To

sufficiently plead inducement, "the patentee must show that the
accused inducer took an affirmative act to encourage
infringement with the knowledge that the induced acts constitute
patent infringement."

Microsoft Corp. v. DataTern, Inc., Nos.

2013-1184, 2013-1185, 2014 WL 1760882, at *3 (Fed. Cir. May 5,
2014)

(citing Global-Tech, 131 S. Ct. at 2068; see also DSU

Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1305 (Fed. Cir.

2006)

(to plead inducement a plaintiff must show sufficient
7

-------------

--------------------

facts that "the alleged infringer .

. possessed specific

intent to encourage another's infringement").

"'[M]ere

knowledge of possible infringement by others does not amount to
inducement; specific intent and action to induce infringement
must be proven.'"

Id.

(quoting Warner-Lambert Co. v. Apotex

Corp., 316 F.3d 1348, 1364

(Fed. Cir. 2003)).

Reading Iqbal

together with Global-Tech, "the question before the Court on
defendants' motion[ ] to dismiss is whether [the plaintiff] has
plead[ed] sufficient facts ... for the Court to infer that the
defendants had knowledge of [plaintiff's] patents and that their
products infringed on those patents." Trading Techs.

Int'l.

v. BCG Partners, Inc., No. 10c715, 2011 WL 3946581, at *3

Inc.

(N.D.

Ill. Sept. 2, 2011).

Alternatively, a plaintiff may show knowledge under
the doctrine of willful blindness.
2068, 179 L. Ed. 2d 1167.

Global-Tech, 131 S. Ct. at

To show willful blindness, the

pleader must show "(1) the defendant must subjectively believe
that there is a high probability that a fact exists and (2) the
defendant must take deliberate actions to avoid learning of that
fact."

Id., at 2070, 179 L. Ed. 2d 1167.

The Complaint has pled sufficient facts to allege that
Formlabs had knowledge that its acts would induce infringement
8

-----------------------------------

or had specific intent to encourage infringement.

The Complaint

makes several allegations which, taken together, support an
inference of knowledge or knowledge through willful blindness.
First, the Complaint alleges that 3DS and Formlabs were
competitors in the same market, stereolithographic 30 printers,
and that 3DS marked its products of the patents-in-suit to the
extent required by law.

~

(Compl.

9.)

Marking of a product has

been found in courts outside of this District to support an
inference that a defendant had knowledge of a patent.
Weiland Sliding Doors and Windows,

See

Inc. v. Panda Windows and

Doors, LLC, No. 10CV677 JLS (MOD), 2012 WL 202664, at *4

Cal. Jan. 23, 2012)

(S.D.

(finding inference of knowledge supported by

patentee's marking of its product); Lutron Electronics Co., Inc.
v. Crestron Electronics, Inc.,

Utah 2013)

970 F. Supp. 2d 1229, 1237-38

(D.

(denying summary judgment where patentee marked its

patents and e-mails showed that defendant was aware of
plaintiff's product).

Buttressing this inference is the fact

that Formlabs and 3DS are competitors in the stereolithographic
30 printer market, which heightens the likelihood that Defendant
had knowledge of existing patents in the industry. See Weiland
Sliding Doors, 2012 WL 202664, at *4

(finding an inference of

knowledge where the complaint alleged that the parties were
competitors in the "high-end lift-slide door system market").
Several industry publications covering the Form 1 30 Printer
9

also made note of outstanding patents covering
stereolithographic 30 printing, 2 and one article specifically
noted that patents in the stereolithographic area are owned by

30 Systems.3

Notably,

Formlabs' co-founder Maxim Lobovsky in an

interview cited "the expiration of a few patents" as a factor in
Formlabs' ability to bring down the cost of the Form 1 30
Printer.

4

Lobovsky is alleged to have referred to a number of

pioneering patents owned by 30 Systems that would have covered
the Form 1 30 printer if they had not expired (Compl.
his comments are alleged to have evidenced Formlabs'

~

33), and

knowledge

of the existence of patents covering stereolithographic 30
printing and to suggest that Formlabs undertook efforts to
uncover patents relating to stereolithography.

These

allegations, taken together, support an inference of knowledge
of the patents-in-suit.

See Weiland, 2012 WL 202664, at *4

(finding knowledge or willful blindness of patents where
plaintiff marked its products,

letters regarding the patents

2

See FormLabs Day 2 646 backers, $924,858, 10 times target, 28 days to go,
Sept. 28, 2012, http://Jdprintingreviews.blogspot.com/2012 09 01
archive.html; Form 1 By Formlabs Launches On Kickstarter, SOLID SMACK, Sept.
27, 2012, http://www.solidsmack.com/cad-design-news/form-l-by-formlabslaunches-on-kickstarter/; Joe Young, JP Morgan: Formlabs Release Could be
Negative for JD Systems, BENZINGA, Sept. 25, 2012, http://www.benzinga.com/
analyst-ratings/analyst-color/12/09/2939278/jp-morgan-formlabs-release-couldbe-negative-for-3d-syst#ixzz314T8c6Kz.
3 See FormLabs Brings Stereolithography to the Desktop,
Sept. 26, 2012,
http://3dprintingreviews.blogspot.com/2012 09 01 archive.html.
4 Jordan Crook, JD Printer Form 1 Gets 6X Its-$100K Funding Goal On
Kicks tarter ... In One Day, TECHCRUNCH, Sept. 27' 2012'
http://techcrunch.com/2012/09/27/3d-printer-form-l-gets-6x-its-100k-fundinggoal-on-kickstarter-in-one-day/.

10

were sent to the defendants and parties were competitors in the
same market).

The Complaint has also sufficiently shown that

Formlabs was at least wilfully blind to the patents-in-suit as
Lobovsky knew that patents covering stereolithography existed,
including an expiring patent, which suggests that Formlabs
sought to find such patents.

If Defendant did not have actual

knowledge of the patents-in-suit, only deliberate action could
have allowed Formlabs from discovering that fact.

Formlabs also had knowledge of at least one of the
patents-in-suit through the complaint filed in the South
Carolina Action and of the patents-in-suit through the instant
Complaint.

"[I]n this Circuit at least, prefiling knowledge of

the patents is not essential to a claim of induced
infringement."

Smartwater, Ltd. v. Applied DNA Sciences, Inc.,

2013 WL 5440599, at *8

(E.D.N.Y. Sept. 27, 2013)

(quoting

Automated Transactions, L.L.C. v. First Niagara Fin. Grp., Inc.,
No. 10-CV-0407, 2010 WL 5819060, at *6 (W.D.N.Y. Aug. 31,
2010)); see also Wing Shing Prods.

(BVI), Ltd. v. Simatelex

Manufactory Co., Ltd., 479 F. Supp. 2d 388, 408

(S.D.N.Y. 2007)

(found that lawsuit provided notice); SEB, S.A. v. Montgomery
Ward & Co., Inc., 412 F. Supp. 2d 336, 344

(S.D.N.Y. 2006)).

While a court in another district has held that "[t]he requisite
knowledge of the patent allegedly inf ringed simply cannot be
11

inferred from mere knowledge of other patents, even if somewhat
similar," Vasudevan Software, Inc.
06638 RS,

2012 WL 1831543, at *3

v. TIBCO Software Inc., C 11-

(N.D. Cal. May 18, 2012),

knowledge after the lawsuits' filings can still be shown based
on the single patent at issue in the South Carolina Action and
for the patents-in-suit in the instant action.
No. 12-CV-5731 (JS) (AKT),

See Smartwater,

2013 WL 5440599, at *8.

The Complaint Has Sufficiently Alleged Affirmative
Acts To Induce Infringement

The Complaint alleges that Formlabs "actively induced
the infringement of at least the method claims of the patentsin-suit

by customers and other users of the Form 1 30

Printer

through videos and other instructional materials"

and that "[s]uch infringement of the unexpired patents-in-suit
is ongoing."

(Compl.

~

24.)

The Complaint cites to various

videos and web pages that show the Form 1 30 Printer being used
by third parties.

(Id.

~

11.)

That these instructions were

provided by Formlabs supports a plausible inference that it
induced customers to use the allegedly infringing devices.

Automated Transactions,

See

2010 WL 5819060, at *6 (finding that

inducement could be inferred based on an allegation that the
defendant provided its customers with "detailed explanations,

12

instructions, and information" as to how to use its product in a
manner that was infringing the asserted patents).

The Complaint

has pled sufficient facts to allege that Formlabs took
affirmative acts to induce infringement.

Defendants cite to In re Bill of Lading Transmission
and Processing Sys.
2012),

Patent Litig.,

681 F.3d 1323 (Fed. Cir.

for the proposition that the Complaint must identify any

infringing features of the accused product or describe how the
allegations demonstrate specific intent by Formlabs to induce
infringement by others.

(Def. Br. at 6.)

In Bill of Lading,

the Federal Circuit reversed the dismissal of a claim for
induced infringement that enabled the court to draw a reasonable
inference that the defendant was liable for the misconduct
alleged.

Id. at 1342.

Notably, the court did not hold that

identification of inf ringing features in a complaint was
necessary to demonstrate specific intent for inducement.
Instead, the court noted that the facts required to make this
determination are "case specific," and that in "some
circumstances failure to allege facts that plausibly suggest a
specific element or elements of a claim have been practiced may
be fatal in the context of a motion to dismiss."

Id.

The case

does not stand for the proposition that every claim for induced
infringement must include a specific list of infringing features
13

--------------------------------

of the accused product.

Defendant also contends the Complaint forces Formlabs
to speculate as to how it must defend itself which is improper
under Fed. R. Civ. P. Rule 8 and Realtime Data, LLC v. Stanley,
721 F. Supp. 2d 538

(E.D. Tex. 2010).

However,

in Realtime the

plaintiff only made vague allegations to "data compression
products and/or services" when it asserted four patent
violations.

Id. at 543.

Here, the Complaint specifically names

the Form 1 30 Printer as the accused device and identifies
customers and other users of the printers as being the direct
infringers induced by Formlabs to infringe the patents-in-suit.
Given such, and that the Complaint has pled knowledge and active
inducement, the Complaint has pled sufficient facts to allege a
section 27l(b) claim.

The Complaint Has Not Sufficiently Alleged
Contributory Infringement

To establish contributory infringement under 35 U.S.C.
§

27l(c), the plaintiff must show: "l) that there is direct

infringement, 2) that the accused infringer had knowledge of the
patent, 3) that the component has no substantial noninfringing
uses, and 4) that the component is a material part of the

14

invention."

Fujitsu Ltd. v. Netgear Inc.,

620 F.3d 1321, 1326

(Fed. Cir. 2010); see also i4i Ltd. Partnership v. Microsoft

Corp., 598 F.3d 831, 850-51 (Fed. Cir. 2010)

("A party is liable

for contributory infringement if that party sells, or offers to
sell, a material or apparatus for use in practicing a patented
process.

That material or apparatus must be a material part of

the invention, have no substantial noninfringing uses, and be
known (by the party) to be especially made or especially adapted
for use in an infringement of such patent." (internal quotation
marks omitted)).

With regards to the first prong of contributory
infringement, the lower courts have differed in their
conclusions as to whether a complaint that complies with the
minimum requirements of Form 18 suffices to state a claim for
direct infringement.
S.A.,

See Gradient Enters., Inc. v. Skype Techs.

848 F. Supp. 2d 404,

407

(W.D.N.Y. 2012)

surprisingly, then, the combination of Twombly,

("Not

Iqbal,

... Form

18, and Rule 84, has led to differing conclusions among the
lower courts about whether a complaint that complies with the
minimum requirements of Form 18 suffices to state a claim for
direct patent infringement.").

However, the Federal Circuit has

held that "whether [a complaint] adequately plead[s] direct
infringement is to be measured by the specificity required by
15

Form 18."

Bill of Lading, 681 F.3d at 1334, see also,

Smartwater, 2013 WL 5440599, at *3 (same); Loftex USA LLC v.
Trident Ltd., No. ll-CV-9349, 2012 WL 5877427, at *3 (S.D.N.Y.
Nov. 2 0, 2012)

(stating that "Official Form 18 in the Appendix

of Forms to the Federal Rules of Civil Procedure ... governs the
pleading standards for a claim of direct patent infringement").
Form 18 requires:

(1) an allegation of jurisdiction; (2) a statement
that the plaintiff owns the patent; (3) a statement
that defendant has been infringing the patent 'by
making, selling, and using [the device] embodying the
patent'; ( 4) a statement that the plaintiff has given
the defendant notice of its infringement; and (5) a
demand for an injunction and damages.

Mczeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357

(Fed. Cir.

2007) .

Given the Federal Circuit's holding in Bill of Lading,
the Court will apply the Form 18 standard in examining direct
infringement.

The Form 18 requirements are lean, and the

Complaint has made sufficient allegations as to these factors.

(See Compl.

~~

3, 4, 7, 25, 26.)

Thus, the Complaint has

sufficiently pled direct infringement.

However, sufficiency under Form 18 should be used to
16

measure only the sufficiency of allegations of direct
infringement, and not indirect infringement.
681 F.3d at 1336.

Bill of Lading,

Claims of indirect infringement requires the

Smartwater,

application of Iqbal/Twombly plausibility standard.
2013 WL 5440599, at *4.

The Complaint only makes a barebones

recitation that the Form 1 30 Printer was "especially made or
especially adapted" for an infringing use and that it has "no

(See Compl.

substantial noninfringing uses".

~

25.)

This is a

mere "formulaic recitation of the elements of cause of action"
that cannot survive a motion to dismiss.
555; Smartwater,

Twombly,

550 U.S. at

2013 WL 5440599, at *11 ("Plaintiff merely

identifies its patents and Defendant's 'Marking products,' and
then repeats the elements of a contributory infringement claim.
This is insufficient.").

The Complaint does allege that the

Form 1 30 Printer is intended to be used as a 30 printer (Compl.
~

10), but no facts or allegations are pled that plausibly

support an inference that there are no substantial noninf ringing
uses of the Form 1 30 Printer especially since the Complaint
does not provide any allegations as to how the Form 1 30 Printer
infringes the patents-in-suit.

The Complaint,

for instance,

does not allege that all stereolithographic methods of 30
printing constitutes infringement of the patents-in-suit, nor
can they given that at least one of the patents involving
stereolithography has expired.

Thus the Complaint's mere
17

conclusory allegations on indirect infringement cannot survive a
motion to dismiss.

The Complaint Has Plead Sufficient Facts
For A Willful Infringement Claim

A claim for willful infringement requires a showing
that the defendant was aware of the asserted patent but acted
despite an objectively high likelihood that its actions
constituted infringement of a valid patent. i4i Ltd. P'ship v.
Microsoft Corp.,

598 F.3d 831, 860

(Fed. Cir. 2010); see also,

In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.Cir. 2007)

(en bane).

The state of mind of the accused infringer is not

relevant to this objective inquiry.

In re Seagate Technology,

LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).

If this prong is

met, the plaintiff must also show that the alleged infringer
knew or should have known of this objectively high risk.
Ltd. P'ship, 598 F.3d at 860.

Willful infringement "requires at

least a showing of objective recklessness."
Technologies

(AFT)

Advanced Fiber

Trust v. J & L Fiber Services, Inc.,

1365, 1377 (Fed. Cir. 2012).

i4i

674 F.3d

"'Actual knowledge of infringement

or the infringement risk is not necessary to plead a claim for
willful infringement,' but the complaint must adequately allege
'factual circumstances in which the patents-in-suit [are] called

18

to the attention' of the defendants."
Motorola Mobility, Inc.,

MONEC Holding AG v.

897 F. Supp. 2d 225, 236 (D. Del. 2012)

(quoting St. Clair Intellectual Prop. Consultants, Inc. v.
Hewlett-Packard Co., C.A. No. 10-425-LPS, 2012 WL 1134318, at

*2-3 (D. Del. Mar. 28, 2012)).

To show such "factual

circumstances," a complaint must "demonstrate[ ] a link between
the various allegations of knowledge of the patents-in-suit and
the allegations that the risks of infringement were either known
or were so obvious that they should have been known."

Id.

(internal quotation marks removed).

As previously noted, the Complaint has alleged
sufficient factual circumstances that allow a plausible
inference that Formlabs had knowledge of the patents-in-suit and
that it had the specific intent to infringe these patents.
Plaintiffs have alleged that Formlabs knew of expiring 3DS
patents, that the parties are competitors and that the industry
publications made note of potential patent issues involved with
the Form 1 3D Printer, all of which allows a plausible inference
that the company knew of the patents-in-suit or that they were
called to its attention.

Formlabs further went on to produce

19

the Form 1 30 Printer, evidencing specific intent to infringe
the patents-in-suit.

Given such, the Complaint has pled

sufficient facts to allege a willful infringement claim against
Formlabs.

Conclusion

Based on the conclusions set forth above, Defendant's
motion to dismiss is (1) granted with respect to Plaintiff's
contributory infringement claim without prejudice and (2) denied
with respect to Plaintiff's willful infringement and induced
infringement claims. Plaintiff is granted leave to replead the
Complaint within twenty days.

It is so ordered.

New York, NY
May

'

, 2014

20