Judge Forrest Holds that Pre-Suit Knowledge of an Application is Not Pre-Suit Knowledge of a Patent

On December 7, 2016, Judge Katherine B. Forrest (S.D.N.Y.) granted defendant Red Box’s partial motion for summary judgment on plaintiff Verint’s inducement and willfulness claims concerning three of the six patents in suit.  The Court stated that for a finding of willful or induced infringement, the Court must find that Red Box had “actual, pre-suit knowledge” of the patent(s) at issue.  While the Court found that there was evidence that Red Box knew of the patent applications, there was no evidence that Red Box had any knowledge of the patents.  However, an application for patent is not a patent and mere knowledge of the existence of a patent application is not enough to support a claim of willful or induced infringement. 

The case is Verint Sys. Inc. and Verint Am. Inc. v. Red Box Recorders Ltd., No. 1:14-cv-05403-KBF (S.D.N.Y. Dec. 7, 2016).