Key Points

• District of New Jersey permits direct patent infringement claims to proceed based on adequately pleaded allegations involving a “class” of accused software products, without element‑by‑element detail.
• Court dismisses willful, induced, and contributory infringement claims with prejudice, holding that pre‑issuance communications, patent families, and publicity do not establish required knowledge.
• Decision reinforces strict pleading standards for knowledge and intent in patent cases and rejects reliance on the complaint itself to supply requisite knowledge.

A recent decision from the U.S. District Court for the District of New Jersey underscores the nuances of sufficiently pleading different types of patent infringement theories.

While the Court permitted software‑based direct infringement claims to proceed, it dismissed claims for willful, induced, and contributory infringement — with prejudice — significantly narrowing the plaintiff’s potential exposure theories.

Direct Infringement Sufficiently Alleged

In her 32-page decision in WinView IP Holdings, LLC v. DraftKings Inc., U.S. District Judge Georgette Castner held that the plaintiff’s Third Amended Complaint (TAC) plausibly stated a claim for direct infringement of the ’543 patent.

Although the Court previously dismissed plaintiff’s Second Amended Complaint (SAC) for failure to adequately allege direct infringement of the ’543 patent, the Court held that new allegations in the TAC now adequately alleged direct infringement, rejecting defendant’s two separate theories.

Pleading Based on ‘Class’ of Products

First, the Court rejected defendant’s argument that the TAC failed to allege sufficient facts to put it on notice of the alleged infringement of three of five accused products. The TAC adequately alleged the accused products are “part of a class,” noting it was sufficient to “provid[e] specific examples of at least one product [the defendant] manufactures or sells that contains mechanisms or processes performing the identified functions, and specific examples of the class of products which also contain the identified functions.”

In particular the Court explained that the TAC describes all five accused products “in detail” and noting “their functionalities that allegedly infringe.” Although defendant argued the alleged facts provided insufficient notice, the court held that plaintiff alleged sufficient “commonalities,” including shared “characteristics” between the accused products, as well as the alleged common “functionality” of the products — including explicit allegations that, for purposes of infringement, the relevant functionality for three “is the same.”

Plaintiff Not Required to Plead Every Element

The defendant also argued that the TAC failed to plead a particular limitation of its newly asserted claim 118, necessitating dismissal for failure to provide adequate notice. The Court rejected this argument, noting “[a] plaintiff is not required to plead infringement on an element-by-element basis. . . .Instead, it is enough ‘that a complaint place the alleged infringer on notice of what activity . . . is being accused of infringement.” Decision at 13 (citing Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1352-53 (Fed. Cir. 2021)).

The Court noted that “While the level of detail required in a pleading varies depending on the complexity of the patented technology and the materiality of any given element,” this did not “disturb the overarching rule that “[a] plaintiff is not required to plead infringement on an element-by-element basis.” Decision at 14. Rather, it was sufficient that the plaintiff provided “detailed allegations” of how the accused products function and communicate service-related information to users’ devices, in contrast to prior dismissals where the complaint included only “conclusory allegations and lacked allegations connecting the allegedly infringing product to the claim elements.”

Ultimately, the Court concluded that plaintiff “has done more than ‘nakedly allege’ infringement,” holding that it was “not fatal” that the plaintiff did not specifically allege how the accused products infringed the claim element regarding “sending only a second set of assets . . . wherein the second set of assets are grouped into a set of necessary assets and a set of preferred assets.”

Willful Patent Infringement

To establish a claim for willful infringement, a claimant must plausibly allege three things as of the time of the claim’s filing:

Defendant knew of the [patents];
after acquiring that knowledge, it infringed the [patents]; and
in doing so, it knew, or should have known, that its conduct amounted to infringement of the [patents].

Here, the Court rejected arguments that the alleged sharing of confidential business materials between the parties, including patent family members, prior to the issuance of the asserted patents, plausibly alleged defendant’s knowledge of the patents-in-suit. The Court explained that “[t]o willfully infringe a patent, the patent must exist and one must have knowledge of it.” Decision at 20 (emphasis in original).

The Court further held that allegations of defendant’s knowledge of issued family members of the asserted patents “standing alone, are also insufficient to plead knowledge of the patents-at-issue.” The Court discounted plaintiff’s allegations related to industry press releases related to its patent portfolio that predated the issuance of the patents-in-suit, as “an allegation of media publicity surrounding an invention does not support an allegation of presuit knowledge absent allegations bridging knowledge of the publicity with knowledge of the patent.” Decision at 21 (cleaned up).

Finally, the Court distinguished plaintiff’s cases finding sufficient pleading of willful infringement based upon a defendant’s monitoring of patent portfolios, as “the TAC does not allege that [defendant] monitored or investigated [plaintiff] and its patent portfolio post-2019, that it was informed patents had issued in 2020, or that it monitored [plaintiff’s] patent portfolio post-issuance in 2020.”

The Court further held that, even if defendant did have sufficient notice of the patents-in-suit, the TAC failed to allege that defendant knew or should have known its conduct was infringing. The Court found that plaintiff “only alleges that there was a vague ‘proposal’ to [defendant] but does not allege any facts that [plaintiff], as part of that proposal, disclosed the patents at issue, the technology, or the allegedly infringing activity by [defendant].”

The Court ultimately dismissed plaintiff’s willful infringement claims because the TAC failed to include “plausible allegations that [defendant] had knowledge of the patents post-issuance and its allegedly infringing conduct.” Decision at 24.

Additionally, the Court reiterated its holding from its dismissal of the SAC that “the complaint itself cannot be the source of the knowledge required to sustain claims of induced infringement and willfulness-based enhanced damages.” Decision at 27. The TAC’s new allegations did not overcome this deficiency, and the Court dismissed plaintiff’s claims of willful infringement.

Indirect Patent Infringement

The Court went on to dismiss plaintiff’s claims for indirect infringement, which can be either induced or contributory infringement, noting that “both require knowledge of the patent and knowledge of infringement, just like willful infringement.” Decision at 29. Since the Court held plaintiff’s allegations regarding knowledge of the patent and knowledge of infringement to be deficient in connection with the willful infringement allegations, it similarly dismissed plaintiff’s claims for induced and contributory infringement without analyzing the additional elements of these claims. In reaching this conclusion, the Court emphasized its repeated rejection that the requisite knowledge could be established by or subsequent to the filing of a complaint, even though other courts, including the District of Delaware, have reached different conclusions. Decision at 30, n.13.

Finally, as the Court had previously dismissed plaintiff’s claims for willful and indirect infringement in the SAC with a detailed discussion of deficiencies in that pleading, the Court held that its dismissal of these claims from the TAC was with prejudice as “extending leave to amend again would be futile.”

Paul W. Kalish and Jonathan J. Madara are members of the IP Litigation team in Fox Rothschild’s Princeton, NJ office and write about patent litigation decisions in the District of New Jersey. Contact Paul at pkalish@foxrothschild.com or 609.895.6751 and Jonathan at jmadara@foxrothschild.com or 609.844.7428.

This information is intended to inform firm clients and friends about legal developments, including the decisions of courts and administrative bodies. Nothing in this alert should be construed as legal advice or a legal opinion. Readers should not act upon the information contained in this alert without seeking the advice of legal counsel. Views expressed are those of the authors and not necessarily this law firm or its clients.