The District of Delaware recently denied a defendant’s motion to dismiss plaintiff’s demand for enhanced damages based on willful infringement pursuant to 35 U.S.C. § 284, explaining that neither a demand for damages under § 284 nor an accusation of willful infringement amount to a claim for relief that can be subject to dismissal under Rule 12(b)(6).
Although not raised in the parties’ briefing, the court addressed the tendency of parties and courts to incorrectly describe a demand for enhanced damages under § 284 as a “claim for willful infringement.” The court explained that the causes of action created by the Patent Act are limited to direct, induced, and contributory infringement—there is no cause of action for “willful infringement.” Accordingly, an accusation of willful infringement is not a “claim upon which relief can be granted,” and thus cannot be dismissed pursuant to a Rule 12(b)(6) motion to dismiss for “failure to state a claim upon which relief can be granted.” Similarly, a demand for enhanced damages under § 284, regardless of whether the demand is based on willful conduct, merely seeks a form of relief upon a successful claim of direct, induced, or contributory infringement. Thus, a demand for enhanced damages also cannot be dismissed on a Rule 12(b)(6) motion. According to the court, so long as a complaint sufficiently alleges a claim of patent infringement, the plaintiff preserves its right to seek enhanced damages for that infringement under § 284 by demanding such damages in the complaint.
Practice Tip: Although parties frequently refer to claims of willful infringement or claims for enhanced damages under 35 U.S.C. § 284, the Chief Judge of the District of Delaware rejects the proposition that these are causes of action that can be dismissed pursuant to Rule 12(b)(6). Parties should continue to monitor court opinions to see if the reasoning in this decision becomes more prevalent or the Federal Circuit opines on the issue. To the extent a case is before the Chief Judge of the District of Delaware, plaintiffs should resist motions to dismiss such allegations, while defendants should focus any motion to dismiss on an underlying act of direct and indirect infringement.
Inari Med., Inc. v. Inquis Med., Inc., Civil Action No. 24-1023-CFC, 2025 WL 2912857 (D. Del. Oct. 14, 2025)
