What chance would you give a Rule 12(b) motion to dismiss a claim of willfulness? That motion won in Abbott Labs. v. Sandoz, (N.D. Ill. 12/4/2007). This suit was later-filed over infringement by a generic substitute. In prior suits over the same patent, the Federal Circuit had vacated a preliminary injunction due to “substantial questions” about validity.
The later-filed suit against Sandoz included a count for willfulness, which prompted a motion to dismiss that count. The District Court starts from the propositions that willfulness is a “question of fact” and that on motion to dismiss the allegations must be taken as true as against the moving party defendant. To me, that cut off the chances to get a 12(b)(6) dismissal.
Wrong again Rumpole! Based on the Seagate ruling by the CAFC, the standard for willful infringement is “objective” reasonableness about whether the conduct would infringe. Sandoz pointed to the earlier opinion that vacated injunction based on validity concerns. On that basis, Sandoz argued its launch of the generic was objectively reasonable, since the patent might prove invalid as had been contended. The Judge agreed, and dismissed the case.
While “objective” suggests a matter that may be assessed by a Court more than proven thorough by evidence, for a fact question of reasonableness to be dismissed at the outset was a surprise. No wonder trolls love this land.