Plaintiff's Failure to Seek Preliminary Injunction Sinks Willfulness Claim as to Post-Filing Conduct

The magistrate judge recommended granting defendant's motion to dismiss plaintiff's willfulness claim for failure to state a claim as to post-filing activities. "Although there are situations where post-filing willful infringement can be alleged without the plaintiff first seeking a preliminary injunction, the procedure for seeking a preliminary injunction tests the reasonableness of a defendant’s non-infringement and invalidity theories at the time that the defendant is relying upon those theories. . . . In the present action, [defendant] is unfairly prejudiced by Plaintiff’s attempt to claim post-filing willful infringement without first seeking a preliminary injunction. Even assuming [In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)] may be dicta on this point, the undersigned concludes it accurately reflects the general rule in the Federal Circuit. No extenuating circumstances have been alleged in this case that would justify a departure from that rule. Accordingly, the undersigned recommends that [defendant's] motion to dismiss the portion of Plaintiff’s complaint alleging post-filing willful infringement be granted, and the claim for willful infringement should be dismissed without prejudice."

WebMap Technologies LLC v. City Accommodations Network, Inc. a/k/a U. S. Travel Group, and d/b/a Riverwalk Hotel Map and d/b/a Airport Hotel Guide, and d/b/a Austin Hotel Map et al., 2-09-cv-00343 (TXED September 10, 2010, Report & Recommendations) (Everingham, M.J.)