Southern District Magistrate Judge Holds That Pleading Willful Patent Infringement Does Not Require Allegations of “Egregious” Infringing Activity and That Requisite Knowledge May Be Provided by a Prior Complaint in the Same Action

By Peter J. Cuomo, Joseph D. Rutkowski, Adam P. Samansky
On December 19, 2022, U.S. Magistrate Judge Robert W. Lehrburger of the Southern District of New York recommended denying a motion to dismiss claims of willful infringement of eight patents asserted in a Second Amended Complaint (“SAC”). The recommendation finds (1) that pleading willful infringement does not require allegations of egregious infringing conduct and (2) that requisite knowledge of the asserted patents and alleged infringement could be satisfied by the filing of the Original Complaint along with plaintiff’s email (“pre-SAC email”) informing the defendants of additional alleged infringement of two patents prior to filing the SAC.

What Can You Do Today?

We provide additional context regarding Magistrate Judge Lehrburger’s decision below and will continue to cover the issue across the district courts and the Court of Appeals for the Federal Circuit, should it provide additional guidance. In the meantime:

Practitioners in the Southern District of New York may not allege “egregious” infringing conduct in order to satisfy the willful infringement and enhanced damages pleading requirements.

Practitioners in the Southern District of New York likely satisfy the requirements of knowledge of the asserted patent and its alleged infringement underlying a claim of willful infringement, if the alleged infringer is notified of the patent and infringement in a prior complaint in the same action.

The pleading standard in other jurisdictions may vary, as may the standard before other judges in the Southern District, and practitioners should consider the state of the case law in the particular jurisdiction, as district courts remain unsettled on the issue of willful infringement pleading requirements. See, for example, our prior coverage of a contrary holding earlier this year from the Central District of California, here.