Cooper Lighting, LLC v. Cordelia Lighting, Inc. et al, 1-16-cv-02669 (GAND April 6, 2017, Order) (Cohen, USDJ)
Monday, April 10, 2017
Willful Infringement Claim Based Solely on Post-Filing Conduct Fails as a Matter of Law
The court granted defendants' motion to dismiss plaintiff's willful infringement claim because it was based on post-filing conduct. "Although [Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016)] rejected the [In re Seagate Tech, LLC, 497 F.3d 1360 (Fed. Cir. 2007)] test of what constitutes a reckless state of mind to support an award of § 284 damages as too rigid, it did not discuss whether such damages are limited to the alleged infringer's pre-filing conduct, other than to state that culpability for willful infringement purposes is 'measured against the knowledge of the actor at the time of the challenged conduct.' The Federal Circuit in Seagate stated that 'in ordinary circumstances, willfulness will depend on an infringer's prelitigation conduct.' Other cases, post-Halo, have concluded that Seagate's conclusion with respect to the unavailability of a claim for willful infringement based upon post-filing conduct is still good law. Further, a court in this district has held that a claim for enhanced damages based on willful infringement 'must necessarily be grounded exclusively in the accused infringer's pre-filing conduct. . . when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction.' . . . Accordingly, the Court finds that Plaintiffs willful infringement claim, which is based solely on Defendants' post-filing conduct, fails as a matter of law."