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United States District Court for the District of Delaware
March 24, 2021, Decided; March 24, 2021, Filed
Civil Action No. 19-1687-CFC-CJB
[*248] MEMORANDUM OPINION
March 24, 2021
/s/ Colm F. Connolly
COLM F. CONNOLLY
UNITED STATES DISTRICT JUDGE
Pending before me are Defendant Barracuda Networks, Inc.'s objections to the Magistrate Judge's September 22, 2020 Report and Recommendation. D.I. 54. The Magistrate Judge recommended in his Report and Recommendation that I grant in part and deny in part Barracuda's motion to dismiss the claims of induced infringement, contributory infringement, and enhanced damages for willful infringement alleged in Plaintiff ZapFraud Inc.'s Second Amended Complaint. Barracuda objects only to the Magistrate Judge's recommendation that I deny Barracuda's request to dismiss ZapFraud's "post-suit" claims for induced and contributory infringement of U.S. Patent No. 10,277,628 (the #628 patent) and for enhanced damages—that [**2] is, claims based on alleged infringement of the #628 patent that occurred after the filing of the original Complaint in this action.
The Magistrate Judge had the authority to make his recommendation under 28 U.S.C. § 636(b)(1)(B). I review his recommendation de novo. § 636(b)(1); see also Fed. R. Civ. P. 72(b)(3); Brown v. Astrue, 649 F.3d 193, 195 (3d Cir. 2011).
ZapFraud filed the Complaint that initiated this action in September 2019. It filed a First Amended Complaint a month later and then filed its Second Amended Complaint in April 2020. In Count I of the Second Amended Complaint, ZapFraud accuses Barracuda of induced, contributory, [*249] and willful infringement "since at least the filing of this action." D.I. 37 ¶¶ 31, 32, 34. Although claims for induced and contributory infringement exist by virtue of § 271 of the Patent Act, there is no such thing as a claim for willful infringement. Nonetheless, "in the vast majority of patent cases filed today, claims for enhanced damages [under § 284 of the Patent Act] are sought based on allegations of willful misconduct-so much so that, even though the words 'willful' and 'willfulness' do not appear in § 284, plaintiffs and courts more often than not describe claims for enhanced damages brought under § 284 as 'willful infringement claims.'" Deere & Co. v. AGCO Corp., 2019 U.S. Dist. LEXIS 25885, 2019 WL 668492, at *3 (D. Del. Feb. 19, 2019).
Claims of indirect infringement—that [**3] is, induced or contributory infringement—require proof that the defendant's conduct occurred after the defendant (1) knew of the existence of the asserted patent and (2) knew that a third party's acts constituted infringement of the patent. Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 135 S. Ct. 1920, 1926, 191 L. Ed. 2d 883 (2015); see also Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766, 131 S. Ct. 2060, 179 L. Ed. 2d 1167 (2011) ("[I]nduced infringement under [35 U.S.C.] § 271(b) requires knowledge that the induced acts constitute patent infringement."); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488, 84 S. Ct. 1526, 12 L. Ed. 2d 457, 1964 Dec. Comm'r Pat. 760 (1964) (holding that contributory infringement under 35 U.S.C. § 271(c) "require[s] a showing that the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringing"). Claims for enhanced damages based on willful infringement similarly require proof that the defendant knew about the asserted patents and knew or should have known that its conduct amounted to infringement of those patents. VLSI Tech. LLC v. Intel Corp., 2019 U.S. Dist. LEXIS 49801, 2019 WL 1349468, at *1 (D. Del. Mar. 26, 2019).
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528 F. Supp. 3d 247 *; 2021 U.S. Dist. LEXIS 55658 **; 2021 U.S.P.Q.2D (BNA) 349
ZAPFRAUD, INC., Plaintiff, v. BARRACUDA NETWORKS, INC., Defendant.
Prior History: ZapFraud, Inc. v. Barracuda Networks, Inc., 2020 U.S. Dist. LEXIS 173019, 2020 WL 5646375 (D. Del., Sept. 22, 2020)
infringement, patent, enhanced damage, willful, recommendation, induced, contributory, indirect, lawsuit, patent infringement, willfulness-based, courts