Posted On: August 5, 2009 by Pilar G. Kraman

Judge Joseph J. Farnan, Jr.: No Per Se Rule that a Reexamination Order Precludes the Possibility of Proving Willful Infringement

In June 2009, Magistrate Judge Stark granted Plaintiff St. Clair’s Motion for Leave to File a Second Amended Complaint to, among other things, add allegations for willful infringement against Defendant Nokia. St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electronic Industrial Co., et al., C.A. No. 04-1436-JJF-LPS (D. Del. June 10, 2009). In opposition to St. Clair’s motion, Nokia, relying on Lucent Techcs. v. Gateway, Inc. and In re Seagate Tech., unsuccessfully argued that St. Clair’s proposed amendment would be futile because the PTO’s grant of a reexamination precludes a claim of willful infringement, as a matter of law. In his July 28, 2009 memorandum opinion, Judge Farnan agreed with Magistrate Judge Stark’s rejection of Nokia’ argument because the courts in Lucent and Seagate “clearly refrained from creating a per se rule that a reexamination order precludes the possibility of proving willful infringement on summary judgment.” St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electronic Industrial Co., et al., C.A. No. 04-1436-JJF-LPS, at 6 (D. Del. July 28, 2009). As such, “Judge Stark correctly rejected Nokia’s reading of Lucent as support for its argument that reexamination order must make futile any attempt to amend a complaint to include a count for willful infringement. As Judge Stark stated, this is so even where the PTO and a District Court do not agree on claim construction because ‘the Court is not bound by [the PTO’s] construction.’” Id.