IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF OHIO 

WESTERN DIVISION AT CINCINNATI 

 

NEXT LIGHTING CORP., 

 Civil Action No. 1:18-cv-00190 

 Plaintiff, 

 

 v. Judge Susan J. Dlott 

 Magistrate Judge Stephanie K. Bowman 

LSI INDUSTRIES INC., 

 

 Defendant. Jury Trial Demanded 

LSI INDUSTRIES INC.’S MEMORANDUM IN SUPPORT OF ITS 

MOTION TO DISMISS 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 1 of 17 PAGEID #: 115
-iTABLE OF CONTENTS 

I. INTRODUCTION .................................................................................................. 1

II. STATEMENT OF FACTS ..................................................................................... 2

A. The Asserted Patents ............................................................................................... 2

B. The Accused Product .............................................................................................. 2

III. STANDARD OF REVIEW .................................................................................... 2

A. Induced Infringement .............................................................................................. 4

B. Willful Infringement ............................................................................................... 5

IV. ARGUMENT .......................................................................................................... 5

A. Plaintiff’s Direct Infringement Claims Fail to Meet The Twombly 

and Iqbal Standard .................................................................................................. 5

i. Plaintiff’s Direct Infringement Claims Merely Recite the 

Claim Elements and Do Not Include Factual Allegations To 

Plausibly Show How The Accused Product Infringes the 

Asserted Claims .......................................................................................... 6

B. Plaintiff’s Induced Infringement Allegations Should Be Dismissed 

Or at Least Limited Because: 1) They Fail to Meet The Twombly 

and Iqbal Standard, 2) The Plaintiff Has Not Pled Factual 

Allegations To Show LSI Knowingly Induced Infringement Of 

The Asserted Claims, And 3) The Complaint Does Not Allege 

That LSI Knew Of The Asserted Patents Prior To January 29, 2018 ..................... 8

i. Plaintiff’s Induced Infringement Claims Fail to Properly 

Plead Direct Infringement Under The Twombly and Iqbal

Standard ...................................................................................................... 8

ii. Plaintiff’s Induced Infringement Claims Do Not Contain 

Facts to Support That LSI Knowingly Induced 

Infringement Of The Asserted Claims ........................................................ 9

iii. Plaintiff’s Induced Infringement Claims Do Not Allege 

That LSI Knew Of The Asserted Patents Prior To January 

29, 2018..................................................................................................... 10

C. Plaintiff’s Willful Infringement Allegations Should Be Dismissed 

Or At Least Limited Because: 1) They Fail to Meet The Twombly 

and Iqbal Standard, 2) The Plaintiff Has Not Pled Factual 

Allegations To Show That LSI’s Conduct Is Of An Egregious 

Nature That Goes Beyond Typical Infringement, And 3) The 

Complaint Does Not Allege That LSI Knew Of The Asserted 

Patents Prior To January 29, 2018 ........................................................................ 10

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 2 of 17 PAGEID #: 116
 - ii - 

i. Plaintiff’s Willful Infringement Claims Fail to Properly 

Plead Direct Infringement Under The Twombly and Iqbal

Standard .................................................................................................... 11

ii. Plaintiff’s Willful Infringement Claims Do Not Contain 

Facts to Support That LSI’s Conduct Is Of An Egregious 

Nature That Goes Beyond Typical Infringement...................................... 11

iii. Plaintiff’s Willful Infringement Claims Do Not Allege That 

LSI Knew Of The Asserted Patents Prior To January 29, 

2018........................................................................................................... 12

V. CONCLUSION ..................................................................................................... 13

 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 3 of 17 PAGEID #: 117
1 

I. INTRODUCTION 

Plaintiff’s Complaint purports to allege direct and induced infringement of U.S. Patent 

No. 8,491,165 (“the ’165 patent”) and U.S. Patent No. 8,684,566 (“the ’566 patent”) 

(collectively, “Asserted Patents”) and that this infringement was willful. However, the 

allegations contained within the Complaint offer no facts that can plausibly support the most 

basic elements of these causes of action. In fact, almost every allegation contained within the 

Complaint is a pure formulaic recitation of the elements that form the cause of action rather than 

facts that could plausibly support a finding of direct or induced infringement. The allegations of 

direct infringement fall far short of meeting the required Twombly and Iqbal pleading standard 

and as such they should be dismissed. Absent direct infringement, there can be no induced or 

willful infringement. As a result, the entire Complaint should be dismissed. 

Additionally, the Complaint provides no factual allegations that LSI knowingly induced 

infringement of the Asserted Patents or that LSI’s conduct is of an egregious nature that goes 

beyond typical infringement. For these additional reasons, the Complaint’s allegations of 

induced and willful infringement should be dismissed. 

Alternatively, should the Court determine that Plaintiff’s letter of January 29, 2018 to LSI 

supports sufficient intent and egregious behavior required to support allegations of induced and 

willful infringement, then these causes of actions should be limited to acts that occurred after 

January 29, 2018 because the Complaint fails to set forth factual allegations that LSI knew of the 

asserted patents prior to this date. Without facts sufficient to plausibly support that LSI knew of 

the Asserted Patents, LSI cannot possibly have had the requisite intent to induce others to 

directly infringe the Asserted Patents nor could LSI have willfully infringed a patent it did not 

know about. 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 4 of 17 PAGEID #: 118
2 

II. STATEMENT OF FACTS 

A. The Asserted Patents 

 Plaintiff asserts infringement of the ’165 patent and the ’566 patent against LSI Industries 

Inc. (“LSI”). (ECF No. 1 ¶¶ 6, 11).1 Specifically, Plaintiff has asserted that LSI infringes claim

34 of the ’165 patent and claim 1 of the ’566 patent (collectively, “Asserted Claims”). (ECF No. 

1 at ¶¶ 7-8, 12-13). 

B. The Accused Product 

The Complaint asserts that LSI’s LED Side Light Recessed Troffer (“Accused Product”) 

infringes each of the Asserted Claims. Plaintiff alerted LSI to the Asserted Patents on January 

29, 2018 but misidentified the various asserted claims, rendering the asserted infringement 

theory confusing. LSI was later notified of the alleged infringement of the Accused Product by 

the filing of the Complaint. LSI terminated sales of the Accused Product mere weeks later. 

III. STANDARD OF REVIEW 

On December 1, 2015, certain amendments to the Federal Rules of Civil Procedure 

became effective. These amendments abrogated Federal Rule of Civil Procedure 84 and Form 

18, and, therefore, they no longer govern the adequacy of pleadings. Instead, the Supreme 

Court’s Twombly and Iqbal decisions govern. Stuart v. Rust-Oleum Corp., 272 F. Supp. 3d 

1019, 1024 (S.D. Ohio 2017) (applying the Twombly and Iqbal decisions to assess the 

sufficiency of claims for patent infringement in light of a Rule 12(b)(6) motion); Atlas IP LLC v. 

Pac. Gas & Elec. Co., No. 15-CV-05469-EDL, 2016 WL 1719545, at *2 (N.D. Cal. Mar. 9,

2016) (“Under the amended rules, allegations of direct infringement are now subject to the 

pleading standards established by Twombly and Iqbal . . . .”); e.Digital Corp. v. iBaby Labs, Inc., 

 

1

 For the purposes of this motion, LSI has taken all factual allegations in the Complaint as true. 

See Iqbal, 556 U.S. at 679. However, no statements made herein should be construed as an 

admission that the factual allegations in the Complaint are true. 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 5 of 17 PAGEID #: 119
3 

No. 15-CV-05790-JST, 2016 WL 4427209, at *3 (N.D. Cal. Aug. 22, 2016) (“the Court 

concludes that former Form 18 no longer controls and that allegations of direct infringement are 

now subject to the pleading standards established by Twombly and Iqbal . . . .”). 

Applying the standards set forth in Twombly and Iqbal, this Court has held that a 

complaint must “allege specific facts plausibly establishing . . . that the accused device contains 

‘each limitation of the claim.’” Stuart, 272 F. Supp. 3d at 1027-28. Courts have recognized that 

a complaint should include a “coherent theory of which claims are allegedly infringed and how 

the accused products practice . . . each of those elements.” Atlas IP, 2016 WL 2866134, at *5 

(emphasis added). To show how the accused products practice each of those elements, the 

Complaint must “map [each] claim limitation onto [a] portion of the accused products” and 

“draw any parallels between the accused products and the claim elements” in a manner that 

permits the Court to plausibly infer that each claim limitation is met. North Star Innovations, 

Inc. v. Etron Tech., 2016 WL 9046909, at *4 (dismissing complaint); see also e.Digital Corp., 

2016 WL 4427209, at *5 (dismissing complaint). In other words, the Complaint cannot merely 

“allege[] that each element of a cited claim is infringed and then parrot[] the claim language for 

each element.” See Macronix Int’l Co. v. Spansion, Inc., 4 F. Supp. 3d 797, 804 (E.D. Va. 

2014); McRo, Inc. v. Rockstar Games, Inc., C.A. No. 12-1513-LPSCJB, 2014 WL 1051527, at 

*6 (D. Del. Mar. 17, 2014) (dismissing indirect infringement claims under Twombly and Iqbal

because the “assertion of infringing use ... [was] in reality little more than a rephrasing of a 

portion of the language of [the asserted claim]”).2

 

2

 Other Courts have similarly dismissed claims for failure to provide a comparison of the claim 

elements to the accused instrumentality. Asghari-Kamrani v. United Servs. Auto. Ass’n, Civil No. 

2:15cv478, 2016 U.S. Dist. LEXIS (E.D. Va. Mar. 22, 2016) (finding the plaintiff’s complaint to 

be deficient in several respects, including failing to specify which features of the defendant’s 

website correspond to features identified in the patent, failing to identify with particularity how 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 6 of 17 PAGEID #: 120
4 

A. Induced Infringement 

A party is liable for induced infringement if it “actively induces infringement of a 

patent.” 35 U.S.C. § 271(b). The U.S. Supreme Court and United States Court of Appeals for 

the Federal Circuit have determined that a showing of induced infringement requires: (1) direct 

infringement by an entity other than the defendant accused of induced infringement; (2) the 

defendant knowingly induced that entity to directly infringe; and (3) the defendant possessed 

specific intent to encourage that direct infringement. See, e.g., Global-Tech Appliances, Inc. v. 

SEB S.A., 131 S. Ct. 2060, 2066-68, 2071-72 (2011); see also Broadcom Corp. v. Qualcomm 

Inc., 543 F.3d 683, 697-98 (Fed. Cir. 2008); DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 

1306 (Fed. Cir. 2006). Moreover, the U.S. Supreme Court has clarified that induced 

infringement requires the alleged inducer’s knowledge that the induced acts of a third party 

constitute patent infringement. Global-Tech Appliances, 131 S. Ct. at 2068. 

In the case of In re Bill of Lading, the Federal Circuit confirmed that the Twombly and 

Iqbal pleading standards are applicable to allegations of induced infringement. 681 F.3d 1323, 

1350-51 (Fed. Cir. 2012). See also Mouldtec, 2012 U.S. Dist. LEXIS 168605, at *4. Although 

knowledge and intent may be averred generally, the Federal Circuit “requires that the pleading 

allege sufficient underlying facts from which a court may reasonably infer that a party acted with 

the requisite state of mind.” Exergen Corp. v. WalMart Stores, Inc., 575 F.3d 1312, 1327 (Fed. 

Cir. 2009); Hershey v. Energy Transfer Partners, L.P., 610 F.3d 239, 249 (5th Cir. 2010) 

(“Under a specific intent standard, mere knowledge is not enough[.]”). The Complaint must, 

 

each allegedly infringing feature of the website infringes the patent, and failing to identify each 

of the claims alleged to have been infringed and details as to how each claim is infringed); 

Jenkins v. LogicMark, LLC, No. 3:16-CV-751-HEH, 2017 WL 376154, at *1, 3 (E.D. Va. Jan. 

25, 2017) (complaint “fail[ed] to specify which features of [the accused products] correspond to 

the limitations of any claims in the identified patents” and “d[id] not identify with any 

particularity how each allegedly infringing feature of the accused products infringes any of the 

named patents”) (emphasis omitted). 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 7 of 17 PAGEID #: 121
5 

therefore, affirmatively plead facts plausibly showing that LSI specifically intended for and 

“actively induce[d]” their customers to directly infringe the patent. See In re Bill of Lading, 681 

F.3d at 1339; DSU Med., 471 F.3d at 1306. 

B. Willful Infringement 

A prerequisite for finding liability for willful patent infringement is that the accused 

infringer had actual knowledge of the patent. Gustafson, Inc. v. Intersystems Indus. Prods., Inc.,

897 F.2d 508, 511 (Fed. Cir. 1990) (“a party cannot be found to have willfully infringed a patent 

of which the party had no knowledge”); i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 860 

(Fed. Cir. 2010) (“Infringement is willful when the infringer was aware of the asserted 

patent....”). In addition to establishing knowledge of the patent, the Complaint must establish 

facts sufficient to support an inference that the alleged conduct by the Defendant is of an 

egregious nature that is beyond typical infringement. See Halo Elecs., Inc. v. Pulse Elecs., Inc., 

136 S. Ct. 1923, 1935 (2016). 

IV. ARGUMENT 

A. Plaintiff’s Direct Infringement Claims Fail to Meet The Twombly and Iqbal

Standard

The Plaintiff contends that LSI directly infringes the Asserted Claims by making and 

selling the Accused Product. (ECF. No. 1 at ¶¶ 8, 13, 19). The Complaint merely recites the 

claim elements and does not include factual allegations to plausibly show how the Accused 

Product or LSI’s manufacture and sale thereof, could infringe the Asserted Claims. The Plaintiff 

has thus failed to plausibly state a claim upon which relief can be granted. 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 8 of 17 PAGEID #: 122
6 

i. Plaintiff’s Direct Infringement Claims Merely Recite the Claim 

Elements and Do Not Include Factual Allegations To Plausibly Show 

How The Accused Product Infringes the Asserted Claims 

The Complaint should be dismissed because it fails to plead factual allegations that show 

how the Accused Product infringes the Asserted Claims. Specifically, below is a table that 

contains the Asserted Claims on the left hand side, while the right hand side of the table contains 

all of the allegations in the Complaint that purportedly show that the Accused Product meets the 

claim limitations. 

Only Asserted Claim of the 

’165 Patent 

Only Allegations in the Complaint re 

Infringement of this Asserted Claim

34. A lighting strip comprising: 

a linear support structure; Defendant’s SLI is a lighting strip incorporating a 

linear support structure. 

an at least partially reflective reflector 

extending substantially along the length 

of said support; and 

The SLI’s reflector uses a high reflectance 

(minimum 92%) matte white polyester powder 

finish. 

The SLI uses a reflector extending substantially 

along the length of the support. 

a plurality of open-air light emitting 

elements disposed along the length of 

said support structure, 

The SLI also incorporates a plurality of open-air 

light emitting elements disposed along the length of 

the support structure. The SLI uses high brightness 

light-emitting diodes (“LEDs”) as the light emitting 

elements. The LEDs are disposed along the length 

of the support structure. 

wherein light from said light emitting 

elements does not pass through 

secondary optics, and 

Light from the SLI’s LEDs does not pass through 

secondary optics. 

wherein the light from said light 

emitting elements is reflected at least 

once before leaving the lighting strip. 

Light from the SLI’s LEDs is reflected at least once 

before leaving the lighting strip. 

Only Asserted Claim of the 

’566 patent 

Only Allegations in the Complaint re 

Infringement of this Asserted Claim

1. A lighting unit comprising 

at least one light source; Defendant’s SLI is a lighting unit that uses high 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 9 of 17 PAGEID #: 123
7 

brightness LEDs as the light source. 

a first, at least partially reflective, 

surface configured to mask the at least 

one light source and prevent a direct 

line-of-sight to the at least one light 

source from outside the lighting unit; 

and 

The SLI’s first . . . surface[] use[s] a highreflectance (minimum 92%) matte white polyester 

powder finish. 

The SLI uses a first surface that masks the LEDs 

and prevents a direct line-of-sight to the LEDs from 

outside the SLI. 

a second, at least partially reflective, 

surface configured to receive light 

reflected from the first surface and 

redistribute the light reflected from the 

first surface in one or more directions. 

The SLI’s . . . second surface[] use[s] a highreflectance (minimum 92%) matte white polyester 

powder finish. 

The SLI also uses a second surface that is 

configured to receive light from the first surface 

and redistribute the light in multiple directions. 

 As shown above, the allegations contained within the Complaint fail to map or show 

where each claim limitation can be found within the Accused Product. North Star Innovations,

2016 WL 9046909, at *4; see also e.Digital Corp., 2016 WL 4427209 (N.D. Cal. Aug. 22, 

2016), at *5. Instead, the Complaint improperly parrots the claim language of the Asserted 

Claims and makes conclusory allegations that the claim limitation is met. McRo, 2014 WL 

1051527, at *6. This mere parroting of the claim language fails to meet the required Twombly

and Iqbal standard and therefore warrants dismissal of the direct infringement allegations. See 

Macronix, 4 F. Supp. 3d at 804 (parroting the claim language for each element “simply does not 

satisfy the notice and showing requirements of Rule 8(a) as interpreted by Twombly and Iqbal”). 

In fact, the Complaint fails even to include an image of the Accused Product in an effort 

to show where each claim limitation can be found within the Accused Product. Even if 

somehow these allegations map or show where each claim limitation can be found within the 

Accused Product—which they do not—these allegations also fail to explain how the components 

within the Accused Product meet the claim limitations. North Star Innovations, 2016 WL 

9046909, at *4; see also e.Digital Corp., 2016 WL 4427209 (N.D. Cal. Aug. 22, 2016), at *5. 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 10 of 17 PAGEID #: 124
8 

As such, these failures warrant dismissal of the direct infringement allegations and in turn the 

entire Complaint. 

B. Plaintiff’s Induced Infringement Allegations Should Be Dismissed Or at 

Least Limited Because: 1) They Fail to Meet The Twombly and Iqbal

Standard, 2) The Plaintiff Has Not Pled Factual Allegations To Show LSI 

Knowingly Induced Infringement Of The Asserted Claims, And 3) The 

Complaint Does Not Allege That LSI Knew Of The Asserted Patents Prior 

To January 29, 2018 

Induced infringement requires: (1) direct infringement by an entity other than the 

defendant accused of induced infringement; (2) the defendant knowingly induced that entity to 

directly infringe; and (3) the defendant possessed specific intent to encourage that direct 

infringement. See Global-Tech Appliances, 131 S. Ct. at 2066-68, 2071-72. Plaintiff’s 

allegations of indirect infringement: 1) do not adequately plead direct infringement, as detailed 

above, 2) fail to include any factual allegations that show LSI knowingly induced infringement 

of the Asserted Patents, and 3) fail to include any factual allegations that show LSI’s knowledge 

of the Asserted Patents prior to January 29, 2018. 

i. Plaintiff’s Induced Infringement Claims Fail to Properly Plead Direct 

Infringement Under The Twombly and Iqbal Standard 

Induced infringement requires Plaintiff to prove direct infringement by an entity other 

than the defendant accused of induced infringement. See, e.g., Global-Tech Appliances, 131 S. 

Ct. at 2066-68, 2071-72. However, as discussed above, the Complaint has failed to sufficiently 

plead direct infringement. See Supra. “Absent direct infringement of the claims of a patent, 

there can be neither contributory infringement nor inducement of infringement.” Carborundum 

Co. v. Molten Metal Equip. Innovations, Inc., 72 F.3d 872, 876 n.4 (Fed. Cir. 1995); see also

Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004). As a 

result, where Defendant’s motions to dismiss Plaintiff’s direct infringement claims has been 

granted, Plaintiff’s related allegations of indirect infringement must also be dismissed. L.M. 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 11 of 17 PAGEID #: 125
9 

Sessler Excavating & Wrecking, Inc. v. Bette & Cring, LLC, No. 16-CV-06534-FPG, 2017 WL 

4652709, at *5 (W.D.N.Y. Oct. 17, 2017) (dismissing the complaint, which alleged both direct 

and indirect infringement, upon finding that “the requisite claims of direct infringement have not 

been adequately pleaded”). 

ii. Plaintiff’s Induced Infringement Claims Do Not Contain Facts to

Support That LSI Knowingly Induced Infringement Of The Asserted

Claims 

The Complaint fails to set forth factual allegations that LSI knowingly induced 

infringement of the Asserted Claims. The Complaint alleges that the “Defendant has had 

knowledge of the ’165 and ’566 patents and has had knowledge of its infringement of the ’165 

and ’566 patents since January 29, 2018 through written notification sent by NEXT to 

Defendant.” (ECF No. 1 at ¶ 18). While this statement may show that LSI had a general 

knowledge of the Asserted Patents, this statement does not contain sufficient to support the 

plausible inference that LSI had pre-suit knowledge that its “end-users, businesses, distributors, 

resellers, and sales representatives” infringed the Asserted Claims. Pragmatus AV, LLC v. 

Yahoo! Inc., No. CIV.A. 11-902-LPS, 2012 WL 6044793, at *15 (D. Del. Nov. 13, 2012). This 

is because the described “January 29, 2018 . . . written notification” is not attached to the 

Complaint, nor does the Complaint describe the substance of this written notification. See 

generally ECF No. 1. Thus, the Court is left to speculate as to what it was about that notice that 

could have plausibly provided LSI with the requisite knowledge of its “end-users, businesses, 

distributors, resellers, and sales representatives” infringing. Id; see, e.g., MONEC Holding AG v. 

Motorola Mobility, Inc., 897 F. Supp. 2d 225, 232 (D. Del. 2012) (finding that lack of factual 

allegations regarding knowledge that induced acts constitute patent infringement warranted 

dismissal of inducement claim); HSM Portfolio LLC v. Fujitsu Ltd., Civil Action No. 11–770–

RGA, 2012 WL 2580547, at *1 (D. Del. July 3, 2012) (finding allegation that purported indirect 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 12 of 17 PAGEID #: 126
10 

infringer was “placed on notice of its infringement” as of a particular date insufficient because 

that allegation of knowledge was otherwise “wholly unsupported by any factual allegations”). 

Accordingly, the induced infringement claims contained within the Complaint are defective. 

iii. Plaintiff’s Induced Infringement Claims Do Not Allege That LSI 

Knew Of The Asserted Patents Prior To January 29, 2018 

At a minimum, the Plaintiff’s induced infringement claims should be limited to alleged 

infringing activities after January 29, 2018 because the Complaint does not allege that LSI knew 

of the Asserted Patents prior to that date. Specifically, a claim for induced infringement requires 

the Plaintiff to prove that LSI knew of the Asserted Patents. See Global-Tech Appliances, 131 S. 

Ct. at 2066-68, 2071-72. However, the only allegation contained within the Complaint that 

alleges that LSI knew of the patents is the following statement: 

Upon information and belief, Defendant has had knowledge of the

’165 and ’566 patents and has had knowledge of its infringement

of the ’165 and ’566 patents since January 29, 2018 through 

written notification sent by NEXT to Defendant. 

(ECF No. 1 at ¶ 18). Absent knowledge before January 29, 2018, LSI could not possibly have 

the requisite intent to induce others to directly infringe the Asserted Patents. Accordingly, 

Plaintiff’s induced infringement claims should be limited to sales that occurred after January 29, 

2018. 

C. Plaintiff’s Willful Infringement Allegations Should Be Dismissed Or At Least 

Limited Because: 1) They Fail to Meet The Twombly and Iqbal Standard, 2) 

The Plaintiff Has Not Pled Factual Allegations To Show That LSI’s Conduct 

Is Of An Egregious Nature That Goes Beyond Typical Infringement, And 3) 

The Complaint Does Not Allege That LSI Knew Of The Asserted Patents 

Prior To January 29, 2018 

A claim of willful infringement requires that the Complaint plead facts sufficient to 

plausibly support an inference that: (1) Defendant knowingly infringed the patent, and (2) the 

alleged conduct by the Defendant is of an egregious nature that is beyond typical infringement. 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 13 of 17 PAGEID #: 127
11 

See i4i, 598 F.3d at 860; Halo Elecs., 136 S. Ct. at 1935; Jenkins, 2017 WL 376154, at *5 

(finding that plaintiff failed to state a claim for willful infringement). Plaintiff’s allegations of 

willful infringement with respect to each of the Asserted Patents should be dismissed because the 

Complaint: 1) does not adequately plead direct infringement, as detailed above, 2) fails to allege 

conduct by LSI of an egregious nature that goes beyond typical infringement, and 3) fails to 

include any factual allegations that show LSI’s knowledge of the Asserted Patents prior to 

January 29, 2018. 

i. Plaintiff’s Willful Infringement Claims Fail to Properly Plead Direct 

Infringement Under The Twombly and Iqbal Standard 

As discussed above, the Complaint has failed to sufficiently plead direct infringement. 

See Supra. Absent direct infringement of the claims of a patent, there cannot be willful 

infringement. As a result, where a motion to dismiss Plaintiff’s direct infringement claims has 

been granted, the related allegations of willful infringement must also fail. Jenkins, 2017 WL 

376154, at *5 (dismissing the Complaint, which included a willful infringement allegation, upon 

finding that the direct infringement claim was not adequately pled). Accordingly, the willful 

infringement claims contained within the Complaint should be dismissed. 

ii. Plaintiff’s Willful Infringement Claims Do Not Contain Facts to

Support That LSI’s Conduct Is Of An Egregious Nature That Goes 

Beyond Typical Infringement 

Willful infringement requires conduct that is “willful, wanton, malicious, bad-faith, 

deliberate, consciously wrongfully, flagrant, or—indeed—characteristic of a pirate.” Halo Elecs., 

136 S. Ct. at 1932. However, the Complaint fails to allege facts that show that LSI’s actions are 

“willful, wanton, malicious, bad-faith, deliberate, consciously wrongfully, flagrant, or—

indeed—characteristic of a pirate.” Id. Instead, the Complaint merely recites conclusory 

allegations related to the elements or factors of willful infringement. As such, the Complaint has 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 14 of 17 PAGEID #: 128
12 

failed to state facts that support a plausible accusation that LSI’s actions “actually amounted to 

an egregious case of infringement of the patent. Jenkins, 2017 WL 376154, at *6; Varian Med. 

Sys., Inc. v. Elekta AB, Civil Action No. 15–871, 2016 WL 3748772, at *8 (D. Del. July 12, 

2016) (dismissing a Complaint for failing to state facts to support an accusation that the 

Defendants' actions “actually amounted to an egregious case of infringement of the patent”). In 

fact, LSI’s conduct does not rise to this egregious level because the Complaint does not allege 

that LSI knew of the Asserted Patents prior to January 29, 2018, and within weeks of the filing of 

this Complaint LSI terminated sales of the Accused Product. Accordingly, LSI’s conduct does 

not rise to the level that is “characteristic of a pirate,” and as such the willful infringement claims 

contained within the Complaint should be dismissed. 

iii. Plaintiff’s Willful Infringement Claims Do Not Allege That LSI Knew 

Of The Asserted Patents Prior To January 29, 2018 

At a minimum, the Plaintiff’s willful infringement claims should be limited to alleged 

infringement after January 29, 2018 because the Complaint does not allege that LSI even knew 

of the Asserted Patents prior to that date. Specifically, a claim for willful infringement requires 

that LSI knew of the Asserted Patents. Gustafson, 897 F.2d at 511 (“a party cannot be found to 

have willfully infringed a patent of which the party had no knowledge”). However, the only 

allegation contained within the Complaint that alleges that LSI knew of the patents is the 

following statement: 

Upon information and belief, Defendant has had knowledge of the

’165 and ’566 patents and has had knowledge of its infringement

of the ’165 and ’566 patents since January 29, 2018 through 

written notification sent by NEXT to Defendant. 

(ECF No. 1 at ¶ 18). Absent knowledge before January 29, 2018, LSI could not possibly have 

willfully infringed the Asserted Patents. Accordingly, if Plaintiff’s willful infringement claim 

survives this motion, it should be limited to infringement that occurred after January 29, 2018. 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 15 of 17 PAGEID #: 129
13 

V. CONCLUSION 

In light of the deficiencies detailed above, Plaintiff’s Complaint should be dismissed for 

failure to state a claim upon which relief can be granted. In the alternative, the Court should 

limit the induced and willful infringement claims to acts that occurred after the written 

notification that was sent to LSI on January 29, 2018. 

Dated: May 24, 2018 Respectfully submitted, 

/s/ Thomas F. Hankinson 

KEATING MUETHING & KLEKAMP, PLL 

Joseph M. Callow, Jr. (0061814) 

Thomas F. Hankinson (0088367) 

One East Fourth Street, Suite 1400 

Cincinnati, Ohio 45202 

Phone: 513-579-6400 

Email: thankinson@kmklaw.com 

 jcallow@kmklaw.com

MCDERMOTT WILL & EMERY LLP 

Matthew E. Leno (to apply pro hac vice) 

28 State Street 

Boston, Massachusetts 02109 

Phone: 617-535-4072 

Email: mleno@mwe.com 

Campbell Casey (applied pro hac vice) 

444 West Lake Street, Suite 4000 

Chicago, IL 60606 

Phone: 312-984-6976 

Email: cgcampbell@mwe.com 

Attorneys for Defendant 

LSI Industries Inc.

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 16 of 17 PAGEID #: 130
 - 1 - 

CERTIFICATE OF SERVICE 

The undersigned hereby certifies that all counsel of record who are deemed to have 

consented to electronic service are being served with a copy of this document via the Court’s 

CM/ECF system on May 24, 2018. 

/s/ Thomas F. Hankinson 

 

Case: 1:18-cv-00190-SJD-SKB Doc #: 17-1 Filed: 05/24/18 Page: 17 of 17 PAGEID #: 131