Under Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), when a potential infringer has actual notice of another’s patent, the potential infringer had an affirmative duty to exercise due care to determine whether or not he is infringing. In In re Seagate Technology LLC, 83 USPQ2d 1865 (Fed. Cir. 2007) (en banc), the Court overruled the affirmative duty required under Underwater Devices and held that willful infringement requires a showing of objective recklessness. Also, the Court made clear that there is no affirmative obligation to obtain opinion of counsel.
In a subsequent section of the opinion of Seagate Technology, the Court appeared to distinguish willful infringement based on pre-litigation conduct and post litigation conduct. In particular, a showing of objective recklessness is required for pre-litigation conduct. However, to allege post litigation willful infringement, the patentee must also seek a preliminary injunction. The Court stated “a patentee who does not attempt to stop an accused infringer’s activities in this manner should not be allowed to accrue enhances damages based solely on the infringer’s post filing conduct. Similarly, if a patentee attempts to secure injunctive relief but fails, it is likely the infringement did not rise to the level of recklessness.”
Also, the Court held that waiver of the attorney client privilege and work product with opinion counsel does not waive the attorney client privilege and work product with trial counsel.