Case 4:22-cv-01490-JST Document 60 Filed 10/11/22 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`LAURI VALJAKKA,
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`Plaintiff,
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`v.
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`NETFLIX INC,
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`Defendant.
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`Case No. 22-cv-01490-JST
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`ORDER GRANTING MOTION TO
`DISMISS; CONTINUING CASE
`MANAGEMENT CONFERENCE
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`Re: ECF No. 51
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`In this patent infringement action, Defendant Netflix Inc. moves to dismiss Plaintiff Lauri
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`Valjakka’s willful infringement claim. ECF No. 51. The Court will grant the motion.1
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`I.
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`BACKGROUND
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`Netflix is a Delaware corporation headquartered in Los Gatos, California. Plaintiff is the
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`named inventor of United States Patent Nos. 8,495,167 (the “’167 Patent”) and 10,726,102 (the
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`“’102 Patent”). Plaintiff alleges that in September 2014, he sent a letter to Netflix notifying it of
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`the ’167 patent. He further alleges that Netflix, upon receiving the letter, has willfully infringed
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`the patent through its use of and improvement to its products.
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`Plaintiff filed this lawsuit in the Western District of Texas in September 2021, ECF No. 1,
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`after which the parties agreed to transfer the case to this Court, ECF No. 17. Netflix now moves
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`to dismiss Plaintiff’s claim for willful infringement as to the ’167 patent.
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`II.
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`LEGAL STANDARD
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`To survive a motion to dismiss, a complaint must plead “enough facts to state a claim to
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`relief that is plausible on its face,” where facial plausibility turns on providing enough “factual
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`1 The Court finds the motion suitable for disposition without oral argument and hereby vacates the
`November 3, 2022 motion hearing. See Fed. R. Civ. P. 78(b); Civil L.R. 7-1(b).
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`Case 4:22-cv-01490-JST Document 60 Filed 10/11/22 Page 2 of 4
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`content that allows the court to draw the reasonable inference that the defendant is liable for the
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`misconduct alleged.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007); Ashcroft v. Iqbal, 556
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`U.S. 662, 678 (2009). Courts accept well-pled factual allegations in the complaint as true and
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`“construe the pleadings in the light most favorable to the nonmoving party.” Manzarek v. St. Paul
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`Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).
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`III. DISCUSSION
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`“Willful infringement is reserved for ‘egregious infringement behavior,’ which is typically
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`described as ‘willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or
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`indeed – characteristic of a pirate.’” NetFuel, Inc. v. Cisco Sys. Inc., No. 5:18-CV-02352-EJD,
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`2018 WL 4510737, at *2 (N.D. Cal. Sept. 18, 2018) (quoting Halo Elecs., Inc. v. Pulse Elecs.,
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`Inc., 579 U.S. 93, 103-04 (2016)). “To establish willful patent infringement, the patent owner
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`must prove knowledge of the patent and knowledge of infringement.” Sonos, Inc. v. Google LLC,
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`No. C 21-07559 WHA, 2022 WL 799367, at *2 (N.D. Cal. Mar. 16, 2022) (citing WBIP, LLC v.
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`Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016); Bayer Healthcare LLC v. Baxalta Inc., 989
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`F.3d 964, 987-88 (Fed. Cir. 2021)), leave to appeal denied, No. 2022-134, 2022 WL 1486359
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`(Fed. Cir. May 11, 2022).
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`Netflix moves to dismiss Plaintiff’s claim for pre- and post-suit willful infringement of the
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`’167 patent. Plaintiff responds that Netflix’s request is procedurally improper at the pleadings
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`stage because willful infringement is not an independent claim within the meaning of Federal Rule
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`of Civil Procedure 8(a)(2). However, none of the cases Plaintiff cites to for support overcomes the
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`weight of authority indicating that courts may consider requests to dismiss claims for willful
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`infringement at the pleading stage. See Sonos, 2022 WL 799367, at *3 (collecting cases). As the
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`Sonos court explained, because the jury must decide the question of willfulness, issues go to the
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`jury only if they are properly framed by the pleadings. Id. (citing Eko Brands, LLC v. Adrian
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`Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020)). The Court finds the Sonos
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`reasoning persuasive and applies it here. Accordingly, the Court considers the merits of Netflix’s
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`motion to dismiss Plaintiff’s willful infringement claim.
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`Case 4:22-cv-01490-JST Document 60 Filed 10/11/22 Page 3 of 4
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`A.
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`Pre-Suit Infringement
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`Plaintiff fails to adequately plead pre-suit willful infringement because he does not
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`plausibly allege that Netflix had the specific intent to infringe the ’167 patent. See Bayer, 989
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`F.3d at 987-88 (“To establish willfulness, the patentee must show the accused infringer had a
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`specific intent to infringe at the time of the challenged conduct.”).
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`Plaintiff’s willful infringement theory turns on a September 2014 letter he sent to Netflix
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`notifying it of the ’167 patent. Plaintiff’s complaint alleges that upon receiving the letter, Netflix
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`began to infringe the patent and “knew that this conduct amounted to infringement because
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`[Netflix] was aware of the patent and its strategic advantage to Defendant’s patent portfolio from
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`the information provided in a [sic] October 2014 letter to Defendant’s headquarters in Los Gatos,
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`California.”2 ECF No. 39 ¶ 20.
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`However, the letter does not accuse Netflix of infringement of the ’167 patent. It only
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`identifies the ’167 patent and explains that “Netflix, as the leading content delivery network, is a
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`potential licensee of the aforementioned patent.” ECF No. 39-1 at 69. “[A]llegations that a patent
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`owner sent a letter merely notifying a . . . party of the existence of a particular patent, without
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`accusing that . . . party of infringement, is, by itself, insufficient” to plead knowledge of
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`infringement. MasterObjects, Inc. v. Amazon.com, Inc., No. C 20-08103 WHA, 2021 WL
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`4685306, at *4 (N.D. Cal. Oct. 7, 2021); see also Fluidigm Corp. v. IONpath, Inc., No. C 19-
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`05639 WHA, 2020 WL 408988, at *5 (N.D. Cal. Jan. 24, 2020) (dismissing willful infringement
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`claim where letter informing defendant of the ’104 patent’s issuance “allegedly notified defendant
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`of the ’104 patent” but “the complaint never alleges that the letter accused defendant of
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`infringement, much less detailed how defendants allegedly infringed”). Plaintiff’s remaining
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`allegation that Netflix knew from the letter that its conduct constituted infringement does not
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`support the plausible inference that Netflix had the specific intent to infringe the ’167 patent. See
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`MasterObjects, 2021 WL 4685306, at *2 (“[A] claim for enhanced damages for willful
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`infringement is not adequately stated when all that is alleged is knowledge of the patent and direct
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`2 While Plaintiff’s complaint refers to this letter as an October 2014 letter, the letter (attached to
`Plaintiff’s complaint as Exhibit D, ECF No. 39-1 at 69) is dated September 29, 2014.
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`Case 4:22-cv-01490-JST Document 60 Filed 10/11/22 Page 4 of 4
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`infringement.”).
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`Plaintiff’s claim for pre-suit willful infringement is dismissed. Because the Court cannot
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`conclude that amendment would be futile, dismissal is with leave to amend.
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`B.
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`Post-Suit Infringement
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`Netflix also challenges Plaintiff’s claim to the extent it seeks post-suit willful infringement.
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`ECF No. 51 at 10-11. Plaintiff’s opposition brief does not address this argument.
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`Because Plaintiff fails to adequately plead specific intent to infringe the ’167 patent, see
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`supra Section III.A, Netflix’s motion to dismiss Plaintiff’s claim for post-suit willful infringement
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`is likewise granted. See MasterObjects, 2021 WL 4685306, at *6 (“While the Court of Appeals
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`for the Federal Circuit has recognized that post-suit misconduct can support a claim for enhanced
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`damages, as explained, willfulness requires pleading more than knowledge of the patent and direct
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`infringement — it requires a specific intent to infringe.” (citing Mentor Graphics Corp. v. EVE-
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`USA, Inc., 851 F.3d 1275, 1295 (Fed. Cir. 2017); Bayer, 989 F.3d at 987)).
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`CONCLUSION
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`For the reasons above, Netflix’s motion is granted with leave to amend. Plaintiff may re-
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`file an amended complaint, solely to cure the deficiencies identified by this order, within twenty-
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`eight (28) days from the date of the order.
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`The case management conference currently scheduled for October 18 is continued to
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`December 13, 2022 at 2:00 p.m. A joint case management statement is due December 6, 2022.
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`IT IS SO ORDERED.
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`Dated: October 11, 2022
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`______________________________________
`JON S. TIGAR
`United States District Judge
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