District courts are split on whether a complaint can provide the required knowledge for post-suit indirect and willful infringement in that same lawsuit. Chief Judge Connolly in the District of Delaware recently confirmed that, consistent with his prior opinions, the complaint cannot serve as the basis for knowledge for either a claim of post-suit indirect infringement or a demand for willfulness-based enhanced damages in that lawsuit.
The defendant relied on one of Chief Judge Connolly’s prior decisions and moved to dismiss the induced infringement claims where the alleged knowledge of the asserted patents was based solely on the content of the complaint. In response, the plaintiff asked Judge Connolly to reconsider that prior decision in light of a recent decision written by Judge Bryson holding that a plaintiff can predicate assertions of post-suit indirect and willful infringement on the knowledge gained from the filing of the complaint. In particular, the plaintiff argued that by not following Judge Bryson’s decision, the plaintiff would be forced to file a second lawsuit to allege indirect and willful infringement based on the first complaint, which would serve little purpose and result in extra time and expense.
Judge Connolly disagreed with the plaintiff’s reasoning and maintained his view that the complaint cannot provide the knowledge for post-suit indirect or willful infringement in that lawsuit. Judge Connolly explained that requiring the plaintiff to bring a second suit to assert indirect or willful infringement could avoid privilege and work product issues that can arise from relying on trial counsel’s opinions regarding infringement. Similarly, the results of the first suit would likely reduce the scope of the second suit, and therefore would not create extra time or expense for the parties or the court. Finally, Judge Connolly noted that while the strategic alternative of sending pre-suit notice of infringement letters to establish the required knowledge could result in defendants preemptively filing a declaratory judgment action in their choice of venue, such a scenario would not be unfair or unwise. Accordingly, the court dismissed the plaintiff’s claims of induced infringement.
Practice Tip: District courts and individual judges remain split on whether a complaint can provide the knowledge required to allege post-suit indirect or willful infringement in a lawsuit. Parties should carefully weigh the costs and benefits of providing notice via a pre-suit letter, which could create declaratory judgment jurisdiction, against filing a complaint, which may result in needing to file a second complaint.
Inari Med., Inc. v. Inquis Med., Inc., Civil Action No. 24-1023-CFC, 2025 WL 2912857 (D. Del. Oct. 14, 2025)