Published on:

District Court Grants Motion for Summary Judgment on Willfulness Where Defendant Had No Knowledge of the Patent Prior to the Filing of the Lawsuit

Plaintiff alleged that Defendant Microsoft Corporation’s (“Microsoft”) software infringed the 7,885,981 patent (“the ‘981 Patent”), which pertains to data processing in relational computer databases. Microsoft filed a motion for summary judgment.

After denying the motion with respect to infringement, the district court turned to issue of willfulness. The district court noted that: It is well-settled that knowledge of the non-infringer’ s patent is a necessary element to a claim of willful infringement.” Olaf Soot Design, LLC v. Daktronics, Inc., 325 F. Supp. 3d 456, 461 (S.D.N.Y. 2018); see also Verint Sys. Inc. v. Red Box Recorders Ltd., No. 14-cv-5403, 2016 WL 7177844, at *2 (S.D.N.Y. Dec. 7, 2016) (“For a finding of willful or induced infringement, the law requires that a defendant have had actual knowledge of the patents at issue.”).

The district court explained “[n]othing in the record establishes Microsoft’s pre-suit knowledge of the ‘981 Patent.” The Plaintiff argued that there was evidence showing that the ‘981 Patent Application and Kaufman publications for related technologies were cited in communications between Microsoft and patent authorities, but the district court ruled that “this is insufficient as a matter of law. Knowledge of patent applications, even applications for the patent at issue, do not establish knowledge of the patent. State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985); Verint Sys. Inc., 2016 WL 7177844, at *2-3.

The Plaintiff also argued that the claim of willful infringement should survive summary judgment because the filing of the lawsuit gave Microsoft actual knowledge of the ‘981 Patent. The district court reject this argument as well. “Plaintiff’s theory is without merit, even if another district court has seemingly endorsed it. See Huawei Techns. Co. Ltd. v. T-Mobile US, Inc., No. 16-cv-00052, 2017 WL 1129951, at *4 (E.D. Tex. Feb. 21, 2017). It is not the law in this district. See Verint, 2016 WL 7177844, at *2-3 (granting summary judgment where “[t]here is no direct evidence in the record . . . that [the defendant] had pre-suit knowledge that the [patents-in-suit] had issued” (emphasis added)). Plaintiff fails to cite any ruling by the Federal Court of Appeals that supports his proposition.”

Accordingly, the district court granted the summary judgment as to the claim for willful infringement.

Kaufman v. Microsoft Corp., Case No. 16 Civ. 2880 (AKH) (S.D.N.Y. Jan. 7, 2020)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or