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Judge Lehrburger Finds That Original Complaint Can Provide Requisite Knowledge For Willfulness Allegations in Second Amended Complaint

Three weeks after recommending deferral of claim construction in a patent dispute between competing massage-device companies, Magistrate Judge Lehrburger recommended denying Defendant Tzumi’s motion to dismiss Plaintiff Therabody’s claims of willful infringement of eight patents in its second amended complaint.  See Therabody, Inc. v. Tzumi Elecs. LLC, No. 21-CV-7803, 2022 BL 453263, at *1 (S.D.N.Y. Dec. 19, 2022).

The court first explained that Therabody was not required to plead “egregious” conduct as part of its willful infringement claims.  Id. at *5–6.  At the motion-to-dismiss stage, the court reasoned, a plaintiff claiming willful infringement need only plausibly allege that the accused infringer’s conduct was “deliberate or intentional.”  Id.  Judge Lehrburger noted that “egregiousness,” which informs whether damages should be enhanced under 35 U.S.C. § 284, is relevant only after a finding of willful infringement.  Id. at *4–6.

The court concluded that Therabody had plausibly pled that Tzumi had the requisite knowledge of the relevant patents to support willful infringement.  Id. at *6–15.  Although the court acknowledged that Therabody had not adequately alleged that Tzumi had pre-suit notice of the patents, Therabody had plausibly alleged Tzumi’s post-suit knowledge.  Id. at *7–15.  Noting divergent precedent on the issue, Judge Lehrburger concluded that Therabody’s initial filing of the lawsuit could provide the requisite knowledge for its willfulness claims in the operative, second-amended complaint.  Id. at *11–15.  The court reasoned in part that the Supreme Court has “eschew[ed] any rigid formula for awarding enhanced damages under § 284,” id. at *15 (quoting Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 107 (2016)), and the Federal Circuit has similarly “eschew[ed] ‘rigid rule[s]’ for enhanced damages,” id. (quoting Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1295–96 (Fed. Cir. 2017)).

The district judge’s decision regarding Judge Lehrburger’s report and recommendation is pending.