It's About What You Know

The U.S. District Court for the Eastern District of Texas dismissed certain pre-suit willful infringement and inducement claims premised upon knowledge of a related patent application to the asserted patent, but allowed claims premised upon knowledge of applications that later issued prior to the filing of the lawsuit to move forward. This Holland & Knight IP/Decode Blog examines the decision and when pleading knowledge of a patent application for purposes of willful or indirect infringement may or may not be sufficient to survive a motion to dismiss.

In most instances, pleading knowledge of a pending patent application, without more, will be insufficient to state a claim for willful or indirect infringement of the patent stemming from that application. As evidenced by a recent decision from the Eastern District of Texas, in some cases, pleading facts concerning a defendant's pre-suit knowledge of a patent application that had received a notice of allowance may be sufficient to satisfy the knowledge requirement for pleading both willful and indirect infringement.

Defendant Taiwan Semiconductor Manufacturing Co. Ltd. (Defendant) recently filed a motion to dismiss plaintiff Advanced Integrated Circuit Process LLC's (Plaintiff) claims of willful, induced and contributory infringement of certain patents related to methods of manufacturing semiconductors in the Eastern District of Texas. One of Defendant's chief arguments was that Plaintiff failed to adequately plead pre-suit knowledge for its willful and indirect infringement claims. In an Order dated March 10, 2026, Judge Rodney Gilstrap granted the motion in part, dismissing Plaintiff's pre-suit willful and induced infringement claims as to just one of the three asserted patents. See Advanced Integrated Circuit Process LLC v. Taiwan Semiconductor Mfg. Co. Ltd., 2:25-cv-00324-JRG (Dkt. 104) (E.D. Tex. Mar. 10, 2026). The decision exemplifies where allegations of pre-suit knowledge of a patent application – but not the issued patent itself – still may be sufficient to plead claims of willful and indirect infringement and survive a motion to dismiss.

The Importance of Knowledge of the Issued Patent (and Sometimes, Application)

Each of the infringement theories at issue in this case (willfulness, inducement and contributory infringement) requires a showing that the accused infringer had knowledge of the asserted patent. To state a claim for willful infringement, a complaint must plead that infringement was "intentional or knowing." Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1926 (2016). Critically here, "plausible allegations" of the knowledge of the asserted patent(s) may be sufficient to support a claim of willfulness. See Plano Encryption Techs., LLC v. Alkami Tech., Inc., 2017 WL 8727249, at *2 (E.D. Tex. Sep. 22, 2017) (collecting cases).

Likewise, for induced infringement, "liability for inducing infringement attaches only if the defendant knew of the patent and that the induced acts constitute patent infringement." Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. 632, 639 (2015) (quotation and citation omitted). That is because, "[l]ike a willful infringement claim, indirect infringement claims require a showing that the accused infringer knew of" the asserted patent. BillJCo, LLC v. Apple Inc., 583 F. Supp. 3d 769, 778 (W.D. Tex. Feb. 1, 2022) (citation omitted). In the contributory infringement context, the accused product must be "known by the party to be specially made or especially adapted for use in an infringement of such patent." In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1337 (Fed. Cir. 2012) (citation omitted).

The knowledge requirement is not satisfied by mere awareness of a pending patent application standing alone. As the Federal Circuit explained in State Indus., Inc. v. A.O. Smith Corp., "[f]iling an application is no guarantee any patent will issue … What the scope of the claims in the patents that do issue will be is something totally unforeseeable." 751 F.2d 1226, 1236 (Fed. Cir. 1985).

In other instances, pleading that a defendant knew of a patent application that had received a notice of allowance may be sufficient to advance past the pleading stage for claims of willfulness and indirect infringement. The distinction between knowledge of an application and knowledge of the issued patent is therefore central to the willfulness and indirect infringement inquiries.

The '572 Patent: Pre-Suit Knowledge of a Related Application Is Not Enough to Plead Willful or Indirect Infringement

The court's analysis of the '572 Patent illustrates the limits of what constitutes sufficient pre-suit knowledge for willful and indirect infringement claims. Plaintiff's theory of knowledge regarding the '572 Patent rested on the fact that on February 6, 2018, the U.S. Patent and Trademark Office (PTO) cited U.S. Publication No. 2005/0070086 (a publication related to but distinct from the '572 Patent) to Defendant as a prior art reference during prosecution of Defendant's own patent application. Critically, the cited publication did not correspond to the '572 Patent; rather, the '572 Patent was a divisional of the application underlying the publication.

The court sided with Defendant and dismissed Plaintiff's claims for willful and induced infringement, holding that "[a] Defendant's knowledge of a publication or application that does not correspond to a patent is insufficient to support an allegation that the defendant knew of that patent." Quoting the Federal Circuit, the court emphasized that "[t]o willfully infringe a patent … one must have knowledge of it." State Indus., 751 F.2d at 1237 (emphasis in original). Because Plaintiff could not bridge the gap between Defendant's awareness of a related publication and actual knowledge of the '572 Patent itself, the court granted the motion as to pre-suit willful and induced infringement of the '572 Patent; however, the court did so without prejudice and allowed Plaintiff 14 days to file an amended pleading "addressing the legal theories and shortcomings" noted in the order.

The '751 and '623 Patents: Where Pre-Suit Knowledge Was Sufficiently Alleged

The court reached a different conclusion with respect to Plaintiff's '751 and '623 Patents. For the '751 Patent, Plaintiff alleged that the PTO cited the '751 Patent's corresponding application to Defendant as a prior art reference on November 3, 2009, after the PTO had already issued a notice of allowance for that application on August 18, 2009, and the patent formally issued on December 15, 2009. The court held that though "mere notice of the pendency of a patent application is not sufficient to support a finding of willful infringement of the subsequently issued patent," those foreseeability concerns "may diminish once the Office issues [a notice of allowance]." A notice of allowance indicates that "the applicant is entitled to a patent under the law." Here, because Plaintiff did not materially amend the claims after the notice of allowance, the court found it plausible to infer that Defendant knew of the '751 Patent itself prior to filing Plaintiff filing the lawsuit and denied Defendant's motion to dismiss.

For the '623 Patent, the patent had already issued on October 21, 2008, more than two years before the PTO cited the '623 Patent's prior publication (U.S. 2005/0121792) as prior art against Defendant during prosecution of Defendant's own patents on December 22, 2010. The court found it "plausible to infer that a defendant became aware of a patent through its investigation of that patent's corresponding application or publication." Unlike the '572 Patent, the publication cited to Defendant directly corresponded to the '623 Patent, making the inferential leap from knowledge of the publication to knowledge of the issued patent a reasonable one at the pleading stage, thwarting Defendant's motion.

Key Takeaways

This decision is a useful reminder for patent litigants that knowledge of the actual patent, and not just a related application or publication, is the touchstone of willful and indirect infringement. The decision also establishes that allegations concerning the purported knowledge of an asserted patent's application may be enough to survive a motion to dismiss where the facts pled, considered in a light most favorable to the nonmoving party, create a reasonable inference that the movant knew of a patent application that that later issued as a patent before the suit was filed. When a plaintiff relies on PTO citations to establish pre-suit knowledge, the citation must connect to the asserted patent itself or its directly corresponding application. A citation to a related but distinct family member, as was the case with the '572 Patent, will not satisfy the knowledge requirement for willful or indirect infringement. Practitioners drafting complaints should carefully trace the relationship between any PTO citations and the asserted patents to ensure the knowledge allegations will survive a motion to dismiss. Likewise, defendants facing willful or indirect claims should scrutinize whether the plaintiff's knowledge theory is tethered to the issued patent or merely to a publication or application within the same patent family – a distinction that, as this decision demonstrates, may make a difference.