2 thoughts on “More on Willfulness

  1. 2

    Is willful infringement the only basis for increasing damages? Suppose, just for the sake of argument, that a small business approach is a large company about one of their patents. The large company demands a royalty-free license or else. When large, does not receive the demanded royalty-free license, the other shoe falls. The large-company IPRs virtually every patent in the small company’s portfolio.

    Under the circumstance, I would think that it is almost irrelevant whether large-company had a good faith belief that they did not infringe because of their abusive prelitigation tactics.

  2. 1

    link to cafc.uscourts.gov

    Willful infringement was an issue in the Aqua Shield case. The District Court denied willful infringement because allegedly the “Defendants [] reasonably believe that their products did not infringe the ‘160 patent” – namely, that the “the Eastern District of New York denied Aqua Shield’s motion for preliminary injunction.”

    The denial of the preliminary injunction was the only basis for denying willful infringement. However the preliminary injunction was denied because there were substantial questions regarding personal jurisdiction and further because the patent owner did not have sufficient proofs of infringement. The Federal Circuit found both reasons irrelevant to the issue of whether the alleged infringer had a good faith belief that they did not infringe.

    As well, during the case, District Court granted a summary judgment of infringement, and the question of post summary judgment willfulness was also raised. Here there the Federal Circuit vacated the finding of no willful infringement because the District Court made no finding that the infringer attempted to design around.

    On remand, the Federal Circuit made observations for the District Court to follow. With respect to the first prong of the Seagate test, the prong of Seagate that focuses on whether the infringer’s defenses, as ultimately presented to the court, were reasonable, the Federal Circuit noted that the alleged infringer presented no infringement defense whatsoever with respect to the majority of the claims, and did not present an element by element argument for invalidity.

Comments are closed.