Willful Infringement: Failure To Obtain An Injunction Is Not A Per Se Bar

In DataQuill Limited v. High Tech Computer Corp., 08-cv-00543 (S.D. Cal.), DataQuill asserted patent infringement against HTC. DataQuill also asserted that HTC's infringement was willful, but limited this assertion to post-filing infringement. HTC moved for summary judgment on various issues including on the issue of willfulness. As discussed herein, the district court denied HTC's summary judgment as to willfulness holding that the fact that DataQuill did not seek a preliminary injunction was not a per se bar to a claim of willful infringement. DataQuill Limited v. High Tech Computer Corp., 08-cv-00543 (S.D. Cal. December 1, 2011) at 17.pdf. The court also held that the fact that the PTO granted HTC's requests for reexamination was not dispositive of whether HTC acted with objective recklessness. Order at 22.

HTC first argued that In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), created a per se rule that a patentee's failure to seek a preliminary injunction barred a claim for willful infringement. In support, HTC cited Seagate, 497 F.3d at 1374:

[W]hen an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction, which generally provides an adequate remedy for combating post-filing willful infringement. A patentee who does not attempt to stop an accused infringer's activities in this manner should not be allowed to accrue enhanced damages based solely on the infringer's post-filing conduct. Similarly, if a patentee attempts to secure injunctive relief but fails, it is likely the infringement did not rise to the level of recklessness. We fully recognize that an accused infringer may avoid a preliminary injunction by showing only a substantial question as to invalidity, as opposed to the higher clear and convincing standard required to prevail on the merits. However, this lessened showing simply accords with the requirement that recklessness must be shown to recover enhanced damages. A substantial question about invalidity or infringement is likely sufficient not only to avoid a preliminary injunction, but also a charge of willfulness based on post-filing conduct. Order at 17.

Although the court conceded that other "district courts have found that Seagate can create a bar to claims for post-filing willful infringement where an injunction was not sought, all the courts that have addressed the issue have found that bar is not absolute.... Because Seagate did not create a per se bar...