- Information Technology: A New, Narrower Willfulness Doctrine?
- September 12, 2004 | Author: Peter E. Strand
- Law Firm: Shook, Hardy & Bacon L.L.P. - Washington Office
Since early February, technology and patent attorneys have been waiting for the opinion of the U.S. Court of Appeals for the Federal Circuit in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp. In September 2003, the Court asked these parties, in a sua sponte grant of rehearing en banc, to argue whether the inference in willful patent infringement cases should be changed.
The Federal Circuit requested briefing on four questions:
- When the attorney-client privilege and/or work product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?
- When the defendant has not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?
- If the court concludes that the law should be changed, and the adverse inference withdrawn as applied to this case, what are the consequences for this case?
- Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even if no legal advice has been secured?
Thirty amici briefs were filed; 29 of them favored elimination of the adverse inference. The Federal Trade Commission also has proposed a narrower willfulness doctrine.
While it remains unclear how far the Court will go in abrogating existing adverse inferences, the opinion will likely result in a new set of standards. Prudent counsel will read the opinion closely, then formulate and implement new practices that reflect those standards.