• 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:

    1. 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?

    2. When the defendant has not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?

    3. If the court concludes that the law should be changed, and the adverse inference withdrawn as applied to this case, what are the consequences for this case?

    4. 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.