In re Seagate Technology:

In a rare unanimous en banc opinion, the CAFC has overruled its prior precedent — holding that willful infringement enhanced damages now requires “at least a showing of objective recklessness.”

Accordingly, to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. 

This eliminates the “affirmative duty of due care” that has historically been created by notice of infringement.

Attorney Client Privilege and Work Product: When asserting an opinion of counsel in defense to a willful infringement claim, any waiver of privilege or work product materials does not (normally) extend to trial counsel.

Read the opinion

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

55 thoughts on “In re Seagate Technology:

  1. The Federal Circuit probably got tired of hearing about the garbage that has attempted to pass — for at least the last 30 years — as “competent” opinion(s) of counsel. I have seen perhaps 5 decent efforts in 36 years of practice — and none by attorneys who cannot and/or do not litigate.

    In particular, as there is no infrigment until the jury/judge says so, an “opinion” on the subject of infringement (or invalidity) is necessarily a prognostication of what a well-instructed jury or a trial judge is expected to do.

    In this era of over-specialization, and when one of these back-room mopes who have spent a career giving “opinions” or “doing opinion work” [ala’ Martindale]is put on the stand, they nearly universally make fools out of themselves, inter alia, when asked the foundational questions for opining on what a judge or jury would be expected to do — i.e., based upon personal knowledge. That is because they have none, and everybody (except the client) knows it.

  2. Dear James A. Donald,

    Thank you for your explanation about your original comment which was quite critical of most patents (including over 7.25 million U.S. patents). It also disparaged a central theme I adopted from a comment made by “KR” and advanced in my comments in this thread. I now understand your comment was limited to:

    “the patents … [you were] looking at…” which were relevant to your particular business.

    My sarcastic remark after your first comment was to suggest that, even if you are a competent patent attorney, and even if you are well versed in apt fields of use, your first comment was offensive; you wrote:

    “… Most patents are in fact unclear … They are worthless as a guide … and intentionally unclear…”

    You see, your first remark encompassed some two dozen of my U.S. and foreign issued and pending patents (two of which the EPO said contained a total of 34 inventions) which reflect my inventing effort spanning 40 years. Had you evaluated my patents, you’d not have made such an untoward overarching comment.

    In fact, for you to write “Most patents are in fact unclear…” you would have had to evaluate most patents (or rely on some qualified statistic).

    Alternatively, you could have written, “In my opinion, most patents I’ve evaluated are unclear.” No one could have reasonably argued with that.

    I’d guess many inventors religiously read Patently-O, and I suspect many, like me, have become increasingly sensitive and stressed, starting circa the time of Festo, when so many from so many directions started attacking the means to our livelihood.

    Many inventors’ balls are in play, and the goal post is receding further and further down field every time we turn around, right out of the park. Thank you in advance for indulging my sensitivity. I doubt you intended to offend anyone.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  3. I wrote:
    “Most patents are in fact unclear, patenting anything, everything, and nothing at all.”

    Just an ordinary inventor wrote:
    “Did you get that from some statistic?, or did your read them and rate them yourself?”

    I was attempting to evaluate as to whether our business was in violation of various patents, and eventually concluded that it was entirely impossible to say – that the patents I was looking at were not intended to be reducible to any specific practice, but rather to create fear, uncertainty, and doubt.

  4. JAOI,

    Two out of three ain’t bad. And I am a Newman fan myself.

    And yes, there are a number of parallels betweenf Real Property and Intellectual Property – e.g., the claims of a patent are the metes and bounds of the invention the inventive entity asserts as its own. I assume that’s why the phrase intellectual property came into vogue in the first place.

  5. Dear Lionel,

    After reconsideration of your and other arguments regarding Seagate’s elimination of the “affirmative duty of due care, ” I concede; perhaps Seagate went a little to far, but my position was way wrong. Your position hit the mark.

    1) In the past, after months of studying, I argued the unconstitutionality of the Supremes’ eBay ruling. I believe I hit the mark on that case, not that my argument is a slam-dunk, but it is on the mark.

    2) As you know, I recently made 119a arguments regarding Scimed v Medtronic. I think you will agree that I mostly hit the mark on that also.

    3) But on Seagate, my seat of the pants inventor-oriented arguments did not hold water. Your corporate patent attorney arguments hit the mark. However, I did make one good analogy, comparing a patent to a parcel of land, infringement to trespass. I know that was astute of me because I subsequently read Judge Newman’s concurring opinion and she also made that analogy.

    Judge Newman, as you would guess, is my heroine, my idol.

    As President Jack Nicholson said in “Mars Attacks” after the Martians vaporized Congress (where are the Martians when you need them?),

    “We still have the executive and the judicial branches:
    ‘Two Out of Three Ain’t Bad’” (loosely quoted).

    I hope you will agree that 2 out of 3 ain’t bad for an ordinary inventor.

  6. Dear James A. Donald,

    Thanks for the heads-up, that’s good to know, no, really, I kid you not.
    Did you get that from some statistic?, or did your read them and rate them yourself?
    Create clear patents, now that’s a novel, useful and non-obvious idea.
    Maybe we should junk ’em all and start over, what do you think?

  7. “If there’s no ability to get more than a
    reasonable royalty or lost profits, why take a
    license? Just do what you want and let the court
    system negotiate a license for you after the
    fact.”

    There is no reason to take a license if the patent is unclear. Most patents are in fact unclear, patenting anything, everything, and nothing at all. They are worthless as a guide to actually implementing the patented idea as a solution to the problem, and intentionally unclear as to whether the engineer’s envisaged solution to the problem constitutes infringement of the patent. In effect, they patent a problem not a solution.

    The new standard makes such patents of very limited value – thereby providing a much needed incentive to create clear patents.

  8. Dear Lionel,

    What you wrote, “Again the large corporation may be aware of the patent…” is inconsistent with what you previously wrote.

    Thank you for your jokes. It is nice to know that you have a sense of humor.

    I guess it was foolhardy of me to expect a corporate patent attorney to see things through the eyes of an inventor, and vice versa. But at least we tried, and for that I thank you.

  9. The last three questions were a joke meant to comment on your repeated questions in case there is any doubt.

  10. JAOI,

    Again the large corporation may be aware of the patent, but that does not mean that it believes that it infringes the patent.

    I did not respond to your questions because they were irrelevant to the present case.

    Do you support the destruction of the environment?

    Do you believe Parents should be able to disregard their parental duties?

    Have you stopped beating your wife?

  11. mtburr, I think you mean PRO LICENSEE in each instance. LICENSOR is patentee, who licenses patent to LICENSEE.

    Also, KSR made it easier to challenge patents based on obviousness, not harder. TSM is not eliminated, it’s just not required to show obviousness (i.e., TSM is not a bright line test).

    With that understanding, all four items you list are PRO LICENSEE aka pro-infringer when “LICENSEE” does not take license.

  12. I misspoke, … probably only KSR gives more leverage to patent owners. The other three decisions, eBay, Medimmune and Seagate, all tip the balance more toward licensees or alleged infringers. In short:
    – KSR eliminated T-S-M test and made it more difficult to challenge patents based on obviousness — PRO PATENTEE
    – Medimmune made it easier for licensees to challenge patents — PRO LICENSOR
    – eBay made it more difficult for patent holders to win automatic injunctions against alleged infringers — PRO LICENSOR
    – Seagate eliminated duty of due care and shifted burden to prove recklessness to the plaintiff — PRO LICENSOR

    Of course it won’t work out that way in all cases. In Seagate, for example, some inventors will benefit while others will suffer. But in general I think that’s the way it’s stacking up.

  13. I agree the CAFC’s decision put the burden where it belongs, with the plaintiff and not the defendant, to prove recklessness/willfulness.

    What I’m wondering now is how this change combines with eBay, Medimmune and KSR to affect the patentee/licensee relationship. What terms do patent owners negotiate into license agreements if licensees hold more of the cards under eBay and Medimmune, and fewer under Seagate and KSR?

    BTW, I dunno if Patently-O allows embedded hyperlinks, but I wrote a story about the CAFC hearing for the August issue of InsideCounsel magazine. The story basically predicted this outcome. You’ll find it here:
    link to insidecounsel.com

    Regards,
    MTBurr

  14. Dear Lionel,

    Re:
    “This may be true of small to medium size businesses, but big business is hardly ever aware of what the little guy is doing. At least in my experience as a corporate patent attorney.”

    It is nice to know that you, as a corporate attorney, do not willfully infringe. However, I was referring to a situation in which the inventor or his patent attorney puts a big business on patent notice and or notice of infringement in writing, which makes it undeniably “aware of what the little guy is doing.”

    May I assume from your lack of any responses to my thrice repeated requests above to respond to my serious questions, that you therefore agree with the obvious inherent implications of those questions?

  15. Dear Raoul,

    Thanks for the info. Your guess makes perfect sense.

    I am still perplexed and upset. I hate to see any decrease in the value of a patent, especially from the CAFC.

  16. Raoul, you got it right. If there is a conflict in cases or precedent, a three judge panel must apply the oldest three judge panel case on point or the newest en banc panel. So if they want to overrule Underwater Devices, they have to do so en banc.

    Interesting side note. The CAFC applies CCPA law as its own and the CCPA almost always sat en banc. Thus, if you cite the CCPA as precedent on the CAFC, most likely the latest in time CCPA case applies. Amazingly, I have found this rule helpful several times.

  17. “In my experience, big businesses routinely, matter-of-factly, scandalously and willfully infringe independent inventor’s patents. Seagate will only serve to increase such contemptible disregard for intellectual property.”

    I would totally disagree with this.

    This may be true of small to medium size businesses, but big business is hardly ever aware of what the little guy is doing. At least in my experience as a corporate patent attorney.

  18. JAOI:

    I don’t think they could have addressed it with a three judge panel. I seem to recall (correct me if I’m wrong on this – I don’t have time to research it) that technically the Federal Circuit can only overrule precedent en banc. I remember some Fed Cir case law that holds that if two three panel holdings were inconsistent that the older one actually takes precedent – although the Federal Circuit overruling precedent with a three judge panel isn’t completely uncommon.

    I’m guessing the Federal Circuit addressed the decision because they wanted to change the standard and saw an opportunity. They probably weren’t willing to wait for the ideal case that specifically addressed the willfullness standard to come along.

  19. Dear Raoul,

    And they addressed it en banc. Out of curiosity, could they have addressed it with a three Judge panel?

    Why do you think they addressed it???

  20. Reading this board, I’m surprised that there isn’t more criticism of the court’s decision to even address the willfulness standard in the first place. Their reasoning for addressing it was weak and wasn’t necessary to find that waiver doesn’t apply to trial cousel.

  21. Dear Lionel,

    And I must respectfully disagree again. There has never been an over abundance of treble damage findings, so why was the “willful” bar too low? I doubt Seagate will reduce the boiler-plate willful allegations, but that’s a trivial matter in any case (pun intended).

    The hope of treble damages is part and parcel (another pun intended) of the motivation to invent and spend tens of thousand$ for a talented professional to prosecute an invention into an enforceable patent, and then spend several millions of dollars to effectively enforce a patent against a willful infringer.

    In my experience, big businesses routinely, matter-of-factly, scandalously and willfully infringe independent inventor’s patents. Seagate will only serve to increase such contemptible disregard for intellectual property.

    It is interesting to note that, in her concurring opinion, pages 41 and 42, Circuit Judge Newman wrote:

    “I also agree with the separate decision to overrule Underwater Devices, but only because that case has been misapplied, …
    “The thrust of Underwater Devices was that patent property should receive the same respect that the law imposes on all property.”

    Thus, it would appear that Judge Newman equated intellectual patent property with real property. Can one then conclude that infringement and trespass are also cut from the same cloth?

  22. JAOI,

    If the plaintiff shows by a preponderance of the evidence that the defendant willfully infringed, then yes, the plaintiff should collect treble damages.

    However, I do not believe anyone here, including myself, have argued against treble damages.

    However, that’s the whole point of willful infringement. This decision did not eliminate treble damages. (I actually did not read it, but I am assuming that’s the case.)

    I am just saying that the burden for showing willfulness has been unjustifiably low in the past and this case goes a long way toward correcting that imbalance in the law.

  23. Caution, if your sense of humor sucks, go straight to CAPS, do not pass go, do not read preface.

    Dear Lionel,

    By way of preface, I agree with you; you are right, and I’ve lost sleep over your comment:
    I’ve done a pss poor job explaining myself.

    However, would you give me high marks for my lively, flowery, entertaining, engaging, well-punctuated, graphic, creative and even occasionally poetic style of commentary?, or am I just annoying at times like the original Mr. Mischievous Malcolm Mooney?

    Be that as it may, I, being of questionably-sound inventorship mind must, and freely do, admit that I do not have the faultless flawless finesse of a fine full-featured attorney, no less patent attorney.

    I’ll try to be more explicit and definitely more SERIOUS:

    “WILLFUL” IS AN INTEGRAL COMPONENT OF THE AMERICAN PATENT SYSTEM.

    Willful infringement has historically gone along with other boiler plate allegations in an infringement complaint – – so what?

    Willful infringement has never been a problem in the past in the real world: In what percentage of patent cases has willful infringement been granted. Hardly any?, so why fuc things up worse than it has been?

    Wake up, smell the coffee, I’ll tell you what’s happening: Our patent system is getting shot to hell, and “willful” is but another casualty.

    In the past, the burden of prevailing on an allegation of willful infringement has been high, much much too high.

    Yes, it is my opinion that potential infringement should be reasonably avoided, even more diligently so than in the past.

    Yes, it is my opinion that when you walk on property belonging to someone else, you should at least look up to see if there is a sign “No Trespassing.”

    You ask: “Shouldn’t the accuser bear the burden of proof?”

    NO is the only correct and just answer.
    In the case of patent infringement, the accused infringer should bear the minimal burden to show that he at least “looked up.” For example, a letter from your patent attorney (costing about an hour of his time) saying that he (the attorney) read the patent in question (especially after Phillips, there is no need to read the file history) and he looked at your product/process and in his opinion you do not infringe. Here is a short sweet sample letter worth saving:

    “Dear Lionel,
    “I read patent No. 1,234,567 and I am familiar with your product/process. In my opinion, you do not infringe either literally or under the doctrine of equivalents. Have a nice day.”

    Lionel, it is now your turn to look at the bigger patent picture and answer my comprehensive patent system questions, of which “willful” is a integral component:

    “No treble damages? No Injunction? It costs tens of thousands for a talented professional to prosecute an inventor’s invention into an enforceable patent, and several millions of dollars to effectively enforce a patent.

    <> Are you in favor of a country where only wealthy inventors and big business get to try their hand at inventing?

    <> Are you in favor of compulsory licensing?, equivalent to EMINENT DOMAIN for big business? Is that Constitutional even without an amendment?

    Also, please comment on this, what KR and I said above:

    “If there’s no ability to get more than a reasonable royalty or lost profits, and no ability for non-competing inventors to enjoin an infringer, why take a license? Just do what you want and let the court system negotiate a license for you after the fact.”

    * * * * *
    (cc: Malcolm)

    All the best,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  24. If opinions matter only for the objectively-defined risk was known or should have been” part, is it the mere fact of having obtained one that counts??? Or is the quality of the opinion assessed, as was the case with most courts up until yesterday. After all, the opinion was wrong, and the infringer was nailed for infringement of a not-invalid patent.

    Has anything actually changed from the “affirmative duty of care” standard in terms of pre-lawsuit risk mitigation?

    Instead of concluding with, “in my opinion you don’t infringe” or, “the patent is invalid,” does a competent opinion now conclude with “in my opinion, your prposed or ongoing activity is not objectively reckless”?

  25. I think opinions certainly still matter. We may not recommend them every time a client gets a ceast and desist letter, but they would certainly be good to have when you go before the judge or jury saying hey my actions weren’t reckless because I did the due diligence to get this opinion of counsel.

    The court is merely saying like Knorr-Bremse that we won’t require you to get one or draw a negative inference because you don’t produce one.

  26. I agree, they are saying you don’t have to get an opinion of counsel to show you are not reckless. They also say objective recklessness, but aren’t they also saying that the “objectively defined risk” must be “known or so obvious it should have been known.” If I get an opinion of counsel I suppose I can use that to say my actions were not reckless. But lets say that despite the opinion my actions still meet objective recklessness as the threshold, I don’t lose do I? Can’t I still argue that even though there is risk, I did not know about that risk (cause the opinion did not tell me that).

    I think you second (lower down) cite leaves off the first sentence that quotes the S.Ct. saying “a person [is] reckless who acts . . . in the face of [1] an unjustifiably high risk of harm that [2] is either known or so obvious that it should be known.” It seems the rest of that paragraph is trying to split that baby. However, either way you cut it there I have to admit that it is still objective, while “known” is subjective “should have known” is more objective.

    Not saying that it is crystal clear to me. It certainly says objective inquiry, but it would seem willfulness is or should be somewhat state of mind. Indeed, isn’t recklessness a state of mind inquiry in a way, informed by objective factors.

    OK, so at the point I think my eyes have crossed. I will have to think about it more once they straighten out.

  27. OK. A little slow here. Agree with you. SOM has to matter on the second part of the test. So, do opinions matter even if there is “no affirmative obligation to obtain one”?

  28. Patent Redneck,

    I agree with you regarding Preliminary Injunctions. They have raised the stakes of not trying for one, and the average cost of patent litigation for both plaintiffs and defendants will go up, since more PI motions will be attempted early on in patent litigations.

    But, regarding “state of mind,” see page 12 of the opinion (towards the top):

    “Because we abandon the affirmative duty of care, we also reemphasize that there is no affirmative obligation to obtain opinion of counsel.”

    (lower down):

    “Accordingly, to establish willful infringement, a pantentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. [cite omitted] The state of mind of the accused infringer is not relevant to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate tha this objectively-defined risk [] was either known or so obvious that it should have been known to the accused infringer.”

    (Sorry if typos, since I typed in these passages.)

    I’m not making this stuff up. This is what the unanimous CAFC en banc opinion says. “The state of mind of the accused infringer is not relevant to this objective inquiry.” There it is.

  29. As I read it you have two inquiries (1) objective recklessness, i.e. the infringer acted despite the high liklihood of infringement, and if that threshold is met you ask (2) whether the infringer knew or should have known of that objective risk. I think state of mind comes in for 2 but not one. Otherwise, the rest of the opinion is doesn’t make sense. Echostar explicitly stated you look to the state of mind of the infringer to determine willfulness. Why would the court even discuss advice of counsel and scope of waivers to trial counsel if that intent was irrelevant. It would just say, it doesn’t matter that you were told that you infringe, we just look at circumstances objectively. I think that section could have been worded a little clearer, but surely they are not saying “willfulness” has nothing to do with an infringer’s state of mind.

    One question I had. Does the opinion increase or reduce a plaintiff’s request for preliminary injunction. In their discussion of trial counsel waiver they suggest that if patentee does not request a PI, there is no enhanced damages for infringement after filing, but if they do request a PI and fail, there is no recklessness. Essentially, they seem to link recklessness to the liklihood of success standard for PIs. Not sure if that is good or bad.

  30. JAOI,

    You have a bit of nerve accusing me of not addressing your points when you appear to ignore mine. You keep ignoring my fundamental question – the point of my original post.

    Shouldn’t the accuser bear the burden of proof?

    This case has nothing to do with injunctions, compulsory licensing, reasonable royalties, or the law of trespass. So yes, I ignore those points as they are completely extraneous to a discussion of the burden of proof with respect to willful infringement.

    So, from your comments, should I conclude that in your perfect world, any time a plaintiff asserts willful infringement, he should just be able to collect unless the defendant can prove he did not?

    You realize that many if not most assertions of willful infringement are frivolous, don’t you. If there is any reasonable argument that the plaintiff knew or should have been aware of the patent, a litigator will tack on willfulness.

    However, the fact that a plaintiff is aware of a patent is no proof that infringement is willful. In fact, I believe that in the majority of cases where the defendant is fully aware of the patent, the infringement is still not willful.

    Just because a plaintiff hires an attorney to contort his claim language in unforeseeable ways to cover my product, does not mean that I did not legitimately think my product/process did not infringe the claims of the patent.

  31. If the “objective recklessness” standard that is “to be defined later” ends up still taking into account whether or not the infringer obtained an opinion of counsel (presumably prior to commencing the infringing activity, or after discovery of the patent), then what has changed from the expressly overruled “affirmative duty of care” standard? If the infringer’s state of mind does not matter, how can an opinion of counsel matter? How can the term “willful” be used the infringer’s state of mind does not matter? How do “standards of commerce” or any other factors help evaluate “objective recklessness” without state of mind?

    Presumably, the patentee would at least need to proof that the infringer knew about the patent prior to the complaint being served, but if what the infringer knew or thought about the patent beyond its existence does not matter, does a court simply assess the merits of the defense overall, since we know the outcome (they lost) and consider whether an impartial group of (choose one:) jurors, federal judges, patent attorneys, businesspersons, would view the defense as so week that it was “reckless” to have done the infrgining acts in view of knowing about the patent?

    This to be defined later standard only matters because the infringer has lost the case, and was found to infringe a (not invalid) patent. Now, it’s time for a court to decide whether to assess a damages multiplier and/or attorney’s fees. And, the CAFC instructs that only pre-filing damages are eligible unless the plaintiff asks for and is granted a preliminary injunction.

    This is AFU.

    Thank God I can charge $475 an hour to slowly explain to clients that I cannot dvise them on whether their activity might consitute “objectively reckless” infringement, since the court said “we’ll let you know later.”

  32. Dear Lionel,

    With all due respect, you primarily addressed my “For anecdotal after 5pm interest excerpts …” above.

    Please address the more serious questions posted right above the “anecdotal after 5pm” comment:

    “No treble damages? No Injunction? It costs tens of thousands for a talented professional to prosecute an inventor’s invention into an enforceable patent, and several millions of dollars to effectively enforce a patent.

    <> Are you in favor of a country where only wealthy inventors and big business get to try their hand at inventing?

    <> Are you in favor of compulsory licensing?, equivalent to EMINENT DOMAIN for big business? Is that Constitutional even without an amendment?

    Please also comment on this, what KR and I said above:

    “If there’s no ability to get more than a reasonable royalty or lost profits, and no ability for non-competing inventors to enjoin an infringer, why take a license? Just do what you want and let the court system negotiate a license for you after the fact.”

  33. One comment on my previous comment – The sentence after First was in reference to the Montana trespass example given by JAOI

  34. “With what other areas of civil litigation would you compare patent enforcement to?

    Trespass? Hell, I believe in some states you can shoot a trespasser if he doesn’t stop when you give him fair warning.”

    Can you explain the correlation between your example and the current case? Because I do not believe one exists.

    First, from the sound of your quote and I am too lazy to look it up it sounds like the action described is illegal, just not enforced. There is a distinction.

    Second, this discussion has nothing to do with injunctions, so you can leave that baggage at the door.

    Third, you are implicitly assuming that any defendant accused of willful infringement (which IMHO is a small minority of them) is guilty unless he can prove himself innocent ad I have a problem with that. That is not the way the legal system (even the civil one) is supposed to work. Don’t you believe the Plaintiff should have to prove his case and not make wild accusations and place the burden of proof on the defendant?

    In Texas you are allowed to use deadly force in defense of property. If someone is taking your property you can shoot them. However, in such a situation, it is pretty straightforward to establish (or frame) someone as taking your property.

    Based upon the CAFC cases I have read, there are multiple cases where willful infringement has been found and it was clear to me the plaintiff had not established the defendant acted willfully – i.e., that the defendant could NOT have reasonably concluded he did not infringe or that the relevant patents were invalid. However, the CAFC’s heavily plaintiff weighted Willfulness criteria allowed the plaintiff to collect anyway.

    Treble damages are supposd to be a penalty against bad actors, not someone who did not dot their i’s or cross their t’s.

  35. For anecdotal after 5pm interest, excerpts from:

    link to wiki.answers.com

    “In Texas, under state law, if the repo man is reposessing your car at your home at night, you can shoot him dead as long as he is on your property when you shoot him (e.g. in your driveway).

    “In Montana, if you have your property in the hills posted no trespassing and you shoot a trespasser dead for being on your property without even checking to see if he is a lost teenager (he was shot from the front porch and was too far away to know who he was), the grand jury will not indict you for murder. To be fair, the person turned out to have a criminal record.”

  36. Dear Lionel,

    With what other areas of civil litigation would you compare patent enforcement to?

    Trespass? Hell, I believe in some states you can shoot a trespasser if he doesn’t stop when you give him fair warning.

    No treble damages? No Injunction? It costs tens of thousands for a talented professional to prosecute an inventor’s invention into an enforceable patent, and several millions of dollars to effectively enforce a patent.

    <> Are you in favor of a country where only wealthy inventors and big business get to try their hand at inventing?

    <> Are you in favor of compulsory licensing?, equivalent to EMINENT DOMAIN for big business? Is that Constitutional even without an amendment?

    Please also comment on this, what KR and I said above:

    “If there’s no ability to get more than a reasonable royalty or lost profits, and no ability for non-competing inventors to enjoin an infringer, why take a license? Just do what you want and let the court system negotiate a license for you after the fact.”

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  37. JAOI,

    Are you kidding me?? The standard for willful infringement has been tremendously out of whack for awhile. I understand you may benefit from it, but think about general rules of fairness or justice.

    In no other area of civil litigation is it OK for one side to assert that the other party acted in bad faith and PLACE THE BURDEN ON THAT OTHER PARTY to prove they did not. Don’t you think that that’s a little insane?

    To win a willful infringement charge, the plaintiff should have to prove by a preponderance of the evidence that the defendant acted in bad faith. If the plaintiff can provide no evidence to support their case, then the defendant shouldn’t be required to make any showing as the claim should be dismissed. Anything less is unamerican

  38. Dear KR,

    Re: To your all-too-true comment, I’ve added one more CAPITALIZED nail in the US patent system’s coffin:

    “If there’s no ability to get more than a reasonable royalty or lost profits, AND NO ABILITY FOR NON-COMPETING INVENTORS TO ENJOIN AN INFRINGER, why take a license? Just do what you want and let the court system negotiate a license for you after the fact.”

    Patriots in the IP world, this is a CALL TO ARMS, to unite, take a stand and fight to regain our Constitutional footing. Are we mice or men?

    PS:
    In 25 words, the lopsided net result of the USSC’s Constitutionally-inconsistent eBay decision:

    “The Supremes’ eBay ruling reserves a patent’s ‘exclusive Right’ for big businesses while denying a patent’s grant of “the exclusive Right” to independent non-manufacturing inventors.”

    A patent without an injunction is like a gun without bullets.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  39. This case is definitely a step in the right direction toward sanity. It still sounds like the bar for treble damages may be lower than it should be, but this is a great improvement.

  40. I like it! — the 50000 geek lawyer march. Live coverage on CNN. Sponsored by Inventech and Inventhelp. We can gather in Lafeyette Park, in front of the CAFC (is it still located there?). We can have a sit-in and burn our Public Search Room User Cards. The 60’s live!

  41. Dear KR,

    Bingo! Closer and closer to compulsory licensing – – eminent domain for big business.

    COL(TM)

    How do we organize a revolt? How about a mass meeting and march in Washington?

  42. If there’s no ability to get more than a reasonable royalty or lost profits, why take a license? Just do what you want and let the court system negotiate a license for you after the fact.

  43. “ALS, don’t you think the CAFC has some very vague statutory language here”

    The language is indeed vague. But how does the permissive, albeit vague language warrant the importation of the highest level of liability, i.e. recklessness?

    This opinion is a pure disgrace to the federal judiciary. You have a Circuit court with the mission of reviewing statutory language de novo. But instead of engaging in extensive analysis of legislative history and commentary as the basis for their opinion, they rather engage in a childish word-game. It’s just plainly stuupid.

    When congress puts the word “willful” into a statute, it is the court’s mission to define the word “willful”, and it is indeed proper to cite other cases from the S.C. and sister circuits that defined the word “willful” in other statutes.

    But here, Congress never put the word “willful” into the statue. It was the CAFC that read it into s. 284. So what’s the point of defining their “own words” by referencing other cases.

    This opinion underscores the CAFC continued trend of manipulating the meaning of statutes and legislative intent to conform with what THEY perceive as wise patent policy.

    So while congressmen are nervously debating changes to wilfull infringement, the CAFC is telling them with a smile. “Don’t fret, we’ll do the job for you. no need for votes. We’ll simply change the meaning of the statute to render willful infringement meaningless and impossible to prove.”

    Patent policy is for Congress to decide, not the court.

  44. Don’t get stressed out over the imposition of a “recklessness” standard for a patent owner to get enhanced damages and attorney’s fees. At least on the recovery of fees point, all this does is level the playing field. Under the current state of the law, unless a defendant proves the patent was obtained by inequitable conduct, a winning defendant hardly ever can recover fees, even against a crappy patent — inequitable conduct requires proof of intent at the reckless level, or even higher. So now the patent owner also has to prove reckless behavior to recover fees. Same thing. If you don’t like the system, suggest to Congress that the prevailing party in all patent cases recover fees as a matter of course (i.e. the British system) — and then watch frivolous patent suits, and frivolous defenses, disppear.

  45. C’mon you guys – it’s so hard to win a willfulness case now that who really cares? How many have been won in the past year? What % of cases is that?

    If the US routinely had the losing party liable for (at least some of) the winning party’s attorney’s fees, then I think this would have an equally punitary effect. The award in each case will (presumably? – sorry to take a shot at US litigation expense) be lower, but the overall award of $ would be much higher.

    Would also clean up the ‘patent troll’ problem, to the extent that there is one and to the extent that people like to use the term.

  46. ALS, don’t you think the CAFC has some very vague statutory language here (“In either event the court may increase the damages up to three times the amount found or assessed.”)? Congress provided no guidance whatsoever in the statute on when to allow such enhancement. It’s easy to accuse the CAFC of “legislating from the bench”, but what else can they do with such a vague statute?

  47. “”recklessness” is the “new” stadard not the “old” standard. Read the opinion.”

    Doh! Thanks. I’m still not freaked out by this. The threat of treble damages for intentionally infringing a patent that is objectively crap has always seemed unfair. To the extent that threat is diminished and the invalidation of crap patents through litigation or other means is encouraged, I am elated, overjoyed, thrilled and, yes, ecstatic, by this development.

  48. “recklessness” is the “new” stadard not the “old” standard. Read the opinion.

    With this en banc opinion the CAFC unabashedly continues its sinful practice of “legislating from the bench”. First they “read” the willfulness standard into 284. After the “willfulness” standard has become so profoundly imbued in patent law jargon (was even cited in dicta by the S.C.), the CAFC has the chutzpah to borrow the defintions of the term “willfulness” applied to other statutes which expressly include willfulness as the standard.

    Read the concurring opinions of Gajarsa and Newman, and you’ll see why the willfulness standard is entirely out of sync with the origins of the treble damages provisions of 284.

  49. You mean this?

    “Accordingly, to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent”

    I dunno. Doesn’t seem so bad to me. I wouldn’t get too hung up on “objectively high likelihood.” It’s going to be the same old deal. Either you are in position of an objectively reasonable legal opinion that you aren’t infringing the patent, or you’re going to get screwed unless the patent is pure garbage in which case you can probably rely on good old common sense.

    If anything, the old “recklessness” standard seemed more difficult than this new one. But I haven’t read the case yet … :)

  50. I agree Malcolm. But the most troubling part of the opinion is where it all but eliminates enhanced damages for willful infringement.

  51. When asserting an opinion of counsel in defense to a willful infringement claim, any waiver of privilege or work product materials does not (normally) extend to trial counsel.

    As it should be. Thank you CAFC.

  52. wow…WOW…so who had “elimination of the affirmative duty of due care” in our pool of eviscerating changes to US patent law?

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