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United States District Court for the District of Delaware
April 12, 2022, Decided; April 12, 2022, Filed
Civil Action No. 19-1307-RGA
Plaintiffs seek to amend their First Amended Complaint to assert claims of willful infringement, induced infringement, and infringement under 35 U.S.C. § 271(g). (D.I. 75 at 1). Defendant objects. I have considered the parties' briefing (D.I. 75, 83, 97) and address each of Defendant's objections in turn.
Defendant argues Plaintiffs' proposed amendment to assert willful infringement is futile and unduly delayed. (D.I. 83 at 2-3). Because I agree with Defendant that Plaintiffs' [*2] motion to amend to allege willful infringement is futile, I do not reach Defendant's argument regarding undue delay. Plaintiffs' allegations that Defendant was aware of (1) license agreements covering "the '051 patent technology" (i.e., not the '051 patent itself) and (2) the application that became the '051 patent, are not, as a matter of law, sufficient to plausibly allege pre-suit knowledge of the '051 patent. (D.I. 75-1 ¶¶ 40, 45-46); State Indus., Inc. v. A. O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985). Nor are Plaintiffs' general allegations relating to Defendant's "sophistication" and routine IP monitoring and freedom to operate activities specific enough to move the needle on the plausibility of Plaintiffs' allegation of pre-suit knowledge. (D.I. 75-1 ¶¶ 50-51). Because Plaintiffs' proposed amendments do not plausibly allege pre-suit knowledge, they are insufficient to state a claim of willful infringement, and therefore futile. Wrinkl, Inc. v. Facebook, Inc., 2021 U.S. Dist. LEXIS 188085, 2021 WL 4477022, at *7 (D. Del. Sept. 30, 2021).1 For these reasons, Plaintiffs' motion to amend to state a claim of willful infringement is DENIED.
Defendant argues Plaintiffs' proposed amendment to assert infringement under § 271(g) is futile because Plaintiffs have not alleged "facts or assertions" in support of their claim that Nanosys "imports in the United States or uses, offers to sell, or sells" products manufactured [*3] abroad using the claimed process. (D.I. 83 at 9). I disagree. Plaintiffs' allegations that (1) Defendant partners with a foreign manufacturer that manufactures colloidal nanocrystals using a process that infringes the Asserted Claims, and (2) Defendant "sells and/or offers to sell within the United States one or more of the Nanosys Quantum Dot Products prepared by its manufacturing partner(s) using processes that infringe at least claims 1 and/or 22 of the'051 patent" are sufficient to plausibly state a claim of infringement under § 271(g). (D.I. 75-1 ¶¶ 31-32). Therefore, Plaintiffs' motion to amend to state a claim of infringement under § 271(g) is GRANTED.
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2022 U.S. Dist. LEXIS 66923 *; 2022 WL 1091283
NNCRYSTAL US CORPORATION and THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ARKANSAS, Plaintiffs, v. NANOSYS, INC., Defendant.
Prior History: Nncrystal US Corp. v. Nanosys, Inc., 2020 U.S. Dist. LEXIS 22462 (D. Del., Feb. 10, 2020)
infringement, induced, manufactured, willful, futile, propose an amendment, motion to amend, imports, offer to sell, allegations, pre-suit, argues, sells, processes, requisite, patented, reasons, seller, amend