Voluntary Dismissal Does Not Moot Motion for Judgment on the Pleadings of Invalidity Under 35 U.S.C. § 101

The court granted defendant's motion for judgment on the pleadings that plaintiff's interactive map patent was invalid for lack of patentable subject matter due collateral estoppel and rejected plaintiff's argument that its pending motion for voluntary dismissal mooted defendant's motion. "The Court enjoys broad discretion in determining whether dismissal pursuant to Rule 41(a)(2) is appropriate. This discretion is not unfettered, however. The Eleventh Circuit has explained, '[i]n most cases, a voluntary dismissal should be granted unless the defendant will suffer clear legal prejudice, other than the mere prospect of a subsequent lawsuit, as a result.' The key question, then, is whether the defendant would 'lose any substantial right by the dismissal.'. . . Defendant may suffer such a loss if Plaintiff’s voluntary dismissal was granted over Defendant’s objection. . . . Without a . . . covenant [not to sue] accompanying the requested dismissal here, the Court believes dismissing this action pursuant to Rule 41(a)(2) might prohibit Defendant from achieving prevailing party status under 35 U.S.C. § 285."

Peschke Map Technologies LLC v. Miromar Development Corporation, 2-15-cv-00173 (FLMD April 15, 2016, Order) (Chappell, M.J.)