In this patent infringement action, Intel filed a motion to dismiss the patent infringement claims for direct and indirect infringement pursuant to Fed.R.Civ.P. 12(b)(6). The plaintiff, VSLI Technology (“VLSI”), opposed the motion and argued that its complaint stated facts sufficient to state claims for relief.

In its motion, Intel asserted that VLSI’s claims for indirect infringement should be dismissed because there were insufficient allegations to establish that Intel was willfully blind to the existence of certain patents. The district court concluded that the allegations were insufficient since they were based solely on the allegation that Intel instructed its employees not to review patents from third parties: “The Court finds that Intel’s policy that forbids its employees from reading patents held by outside companies or individuals is insufficient to meet the test of willful blindness.”

Nonetheless, the district court determined that the claims should only be dismissed without prejudice to allow VLSI to re-allege the indirect infringement claims if discovery justified doing so. “Specifically, that the Court will dismiss VLSI’s claims of indirect infringement without prejudice to the refiling of these claims after discovery has been conducted. The Court intends to be very liberal in the discovery that it will allow VLSI to conduct. For example, VLSI may do discovery into its belief that Intel has been provided with notice of unasserted NXP patents, and the reasons for Intel’s failure to ascertain information about the patents asserted in this litigation. If after VLSI has taken discovery it decides to amend its complaint to make allegations of indirect infringement, it will be free to do so, subject to the provisions of Rule 11. Intel can then file a motion for summary judgment with respect to that issue if it wishes to do so.”

The district court also concluded that the same reasoning would apply to the claim for willful infringement and enhanced damages. “The Court will dismiss VLSI’s claims for enhanced damages based on willful infringement without prejudice to the refiling of these claims after discovery has been conducted. As stated before, the Court intends to be very liberal in the discovery that it will allow VLSI to conduct. After VLSI has taken discovery, it may decide to amend its complaint to include enhanced damages based on willful infringement. Intel may also file a motion for summary judgment with respect to this issue if it wishes to do so.”

Accordingly, the district court granted the motion but only dismissed the claims without prejudice.

VLSI Technology, LLC v. Intel Corp., Case No. 6:19-CV-000254-ADA (W.D. Tex. Aug. 6, 2019)