Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[JimIvey]

I don't think this was mentioned here before.  My apologies if it's old news.

In this article from November (just forwarded to me by my partner), a summary of the decision of Knorr-Bremse quotes/cites my partner.

http://www.cio.com/archive/111504/tl_court.html

Let me briefly summarize the context.  Infringement which is "willful" carries triple damages -- e.g., three times the normal "reasonable royalty" liability for patent infringement.  Willful infringement generally boils down to knowledge of the patent and lack of a good-faith argument that the patent is either not infringed or not valid.

Such a claim of non-willfulness is generally shown by an opinion of "independent counsel" (e.g., an objective attorney) that the patent (specifically each of its claims) is either not infringed or not valid.  So, what happens when you don't present such an opinion in court?  There are risks in presenting that opinion -- a big one is that the opinion frequently outlines your entire litigation strategy.  Up until last September, a negative inference could be drawn -- that you would only not produce such an opinion if you had no legitimate argument for non-willfulness of your infringement.  

Knorr-Bremse reversed that negative inference.  Now, failure to produce an opinion doesn't give rise to an inference of willful infringement.  

I believe that's the right thing.  On the other hand, the way things were before generated a lot of profitable work for patent attorneys -- but long term the profession won't survive unless we provide services that appear to be good values to our clients.  Spending a hefty 5 figures, perhaps 6 figures to merely ante up to avoid an inference of willfulness of infringement just seemed unfair to most on the defendant side of patent litigation.

The problem with the decision is that the fact for willfulness are in the minds of the defendants -- and that's hard to get at from the plaintiff's side.  However, for whatever reason, the burden of proof for willfulness was placed on the plaintiff and I think it ought to stay there.

Regards.