Surviving Reexamination May Help Patentee Prove Willful Infringement

Scott Daniels | October 6, 2010

The CAFC’s 2007 decision In re Seagate contains a passage suggesting that a patentee must successfully move for a preliminary injunction in order to show that the defendant’s infringement, after the filing date of the complaint, was willful.  In dicta, the Court stated that a “patentee who does not attempt to stop an accused infringer’s activities in this manner [by seeking a preliminary injunction] should not be allowed to accrue enhanced damages based solely on the infringer’s post-filing conduct”).

Since Seagate numerous trial courts have considered this question of whether the patentee must seek preliminary relief.  The consensus appears to be that there is no per se rule – whether post-complaint acts of infringement were willful depends on the facts of the individual case.  Of special interest to us is the holding of the trial court in St. Clair Intellectual Prop. Consultants, Inc. v. Palm, Inc., specifically that when a patent has emerged from reexamination without narrowing amendment of the claims, the patentee had thereby established sufficient likelihood that the defendant infringed a valid patent, so that the patentee could assert willful infringement without first seeking a preliminary injunction.

This holding in St. Clair that success in reexamination could substitute for a successful motion for a preliminary injunction received a favorable nod from Judge Charles Everingham IV in WebMap Techs., LLC v. Google, Inc.last month. There, Judge Everingham stated that the circumstances that would remove the need for a preliminary injunction “include a material change that could create an objectively high likelihood of infringing a valid patent, such as a patent surviving reexamination proceedings without narrowed claims,” citing St. Clair.

Judge Everingham’s comments were themselves dicta since the circumstances of Webmap did not include a reexamination.  Still, Webmap is at least persuasive authority that a patentee, fortunate enough to survive reexamination but unwilling to spend money for a preliminary injunction, could profitably cite.

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