United States District Court, D. Kansas
MEMORANDUM AND ORDER
MURGUIA United States District Judge
Garmin Switzerland GmbH and Garmin Corporation bring this
action against defendants Navico Inc., C-MAP USA, Inc., and
C-MAP/Commercial, Ltd. (“C-MAP”), alleging
defendants infringed a number of patents. Before the court is
plaintiffs' Motion for Leave to Amend the Complaint (Doc.
73). Plaintiffs request leave from the court to amend the
complaint to add allegations of willful infringement against
defendant C-MAP based on evidence discovered in C-MAP's
responses to the first set of interrogatories. C-MAP asks the
court to deny plaintiffs' motion because their proposed
amendment is futile. For the reasons set forth below, the
court grants plaintiffs' motion.
filed their initial complaint on October 17, 2016 alleging
C-MAP infringed U.S. Patent No. 7, 268, 703 (“the
‘703 patent”). Plaintiffs filed an amended
complaint on December 27, 2016 which made minor corrections
to the originally filed complaint. Pursuant to the scheduling
order, plaintiffs had until May 19, 2017 to file any further
motions to amend pleadings.
served their first set of interrogatories to defendants on
March 10, 2017. Relevant to this motion, C-MAP responded that
it first learned of the ‘703 patent “at some time
in the 2011 or 2012 time frame.” (Doc. 74, at 7.) Based
on this information, plaintiffs notified C-MAP of their
intention to amend the complaint to include allegations of
willful infringement. C-MAP declined to consent to the
amendment arguing the amendment was futile. Plaintiffs filed
this motion on May 19, 2017-within the scheduling order's
deadline for motions to amend pleadings.
Rule 15(a)(2) of the Federal Rules of Civil Procedure, a
party may amend its pleading only with the opposing
party's written consent or the court's leave. A court
should “freely give leave when justice so
requires.” Fed.R.Civ.P. 15(a)(2). The decision whether
to allow an amendment is within the discretion of the court.
Hayes v. Whitman, 264 F.3d 1017, 1026 (10th Cir.
2001). Refusing to grant leave to amend, however, is
“generally only justified upon a showing of undue
delay, undue prejudice to the opposing party, bad faith or
dilatory motive, failure to cure deficiencies by amendments
previously allowed, or futility of amendment.”
Frank v. U.S. West, Inc., 3 F.3d 1357, 1365 (10th
Cir. 1993) (citing Foman v. Davis, 371 U.S. 178, 182
may deny a motion for leave to amend on the basis of futility
if the “amendment could not have withstood a motion to
dismiss or otherwise failed to state a claim.”
Ketchum v. Cruz, 961 F.2d 916, 920 (10th Cir. 1992).
Rule 8(a)(2) of the Federal Rules of Civil Procedures states
that a pleading must contain “a short and plain
statement of the claim showing that the pleader is entitled
to relief.” To satisfy this standard, a complaint must
present factual allegations that “raise a right to
relief beyond the speculative level, ” and must contain
“enough facts to state a claim to relief that is
plausible on its face.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555, 570 (2007). A claim is
plausible when “the pleaded factual content allows the
court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.” Ashcroft v.
Iqbal, 556 U.S. 662, 663 (2009). When the complaint
contains well-pled factual allegations, a court should
“assume their veracity and then determine whether they
plausibly give rise to an entitlement to relief.”
Id. “[T]he mere metaphysical possibility that
some plaintiff could prove some set of
facts in support of the pleaded claims is insufficient; the
complaint must give the court reason to believe that
this plaintiff has a reasonable likelihood of
mustering factual support for these claims.”
Ridge at Red Hawk, L.L.C. v. Schneider, 493 F.3d
1174, 1177 (10th Cir. 2007). This inquiry, however, is not to
determine whether a plaintiff will “ultimately prevail
but whether the claimant is entitled to offer evidence to
support the claims.” Swierkiewicz v. Sorema
N.A., 534 U.S. 506, 511 (2002).
move for leave to amend their complaint arguing that newly
discovered evidence, revealed to them after the first set of
interrogatories, gives rise to a plausible claim of willful
infringement. C-Map claims that plaintiffs' amendment is
futile because they have not pled any facts that would
establish egregious infringement.
U.S.C. § 284 provides guidelines for a court when
awarding damages for patent infringement. Notably, a court
may “increase the damages up to three times the amount
found or assessed.” 35 U.S.C. § 284. The United
States Supreme Court determined the language in § 284
allows courts discretion when determining when enhanced
damages are appropriate, however, “discretion is not
whim.” Halo Elecs., Inc. v. Pulse Elecs.,
Inc., 136 S.Ct. 1923, 1931-32 (2016) (noting
“[a]lthough there is no precise rule or formula for
awarding damages under § 284, a district court's
discretion should be exercised in light of the considerations
underlying the grant of that discretion.”). Enhanced
damages, according to the Court, were designed “as a
‘punitive' or ‘vindictive' sanction for
egregious infringement behavior.” Id. at 132.
Egregious infringement has been described as behavior that is
“willful, wanton, malicious, bad-faith, deliberate,
consciously wrongful, flagrant, or-indeed-characteristic of a
pirate.” Id. Therefore, a court's
discretion to award enhanced damages is narrow and should be
reserved only for “egregious cases of culpable
heightened requirement is intended to reflect the underlying
goal of patent law-to strike a “‘careful balance
between the need to promote innovation' through patent
protections, and the importance of facilitating the
‘imitation and refinement through imitation' that
are ‘necessary to invention itself and the very
lifeblood of a competitive economy.'” Id.
at 1935. In recognizing these goals, courts must be wary of
awarding enhanced damages in “garden-variety
plaintiffs allege that C-MAP not only infringed the
‘703 patent, but continued its infringing conduct
despite knowing about the patent in 2011 or 2012. C-MAP
argues that knowledge of the patent does not rise to the
egregious level of conduct required for heightened damages
under § 284. Indeed, in his dissent in Halo
Electronics, Justice Beyer noted that “references
to ‘willful misconduct' do not mean that a court
may award enhanced damages simply because the evidence shows
that the infringer knew about the patent and nothing
more.” 136 S.Ct. at 1936.
argues that plaintiffs' proposed amended complaint does
not include any facts that would establish a plausible claim
of willful infringement, and, therefore, the amendment is
futile because it would not survive a motion to dismiss.
C-MAP cites a number of cases from other jurisdictions that
support the assertion that knowledge of the patent plus
continued infringing conduct, and nothing more, does not
state a plausible claim of egregiousness. See CG Tech.
Dev., LLC, v. Zynga, Inc., No. 2:16-cv-00859-RCJ-VCF,
2017 WL 662489, at *4 (D. Nev. Feb. 17, 2017) (dismissing
willful infringement claim because “[p]laintiffs have
simply made the conclusory allegations that Defendant was
aware of the ‘818 Patent and that the continued offer,
use, and promotion of its infringing social casino products .
. . constitutes willful and egregious infringement
behavior.”); Cont'l Circuits LLC v. Intel
Corp., No. CV16-2026 PHX DGC, 2017 WL 679116, at *11 (D.
Ariz. Feb. 21, 2017) (dismissing willful infringement claim
after finding plaintiffs had alleged sufficient facts to show
knowledge but not to show the additional element of
egregiousness.); Jenkins v. LogicMark, LLC, No.
3:16-CV-751-HEH, 2017 WL 37615, at *5 (E.D. Va. Jan. 25,
2017) (finding plaintiff failed to allege any specific facts
for the court to infer that defendant had notice of the
patents and that its actions were egregious, ...