Willfulness in Patent Infringement: Pre- and Post-Litigation Conduct

The standard for willful patent infringement has evolved, with a key shift occurring in In re Seagate Technology LLC, 83 USPQ2d 1865 (Fed. Cir. 2007) (en banc), which overruled the earlier requirement set in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983).

The Standard for Willful Infringement

Under Underwater Devices, a potential infringer who had actual notice of a patent held an affirmative duty to exercise due care to determine if they were infringing, which often involved obtaining an opinion of counsel. However, the Federal Circuit in Seagate replaced this standard with a higher threshold of objective recklessness, effectively removing the affirmative duty to seek a legal opinion on infringement. This change meant that willful infringement now requires proof of objectively reckless behavior, rather than simply a lack of due care.

Distinguishing Pre-Litigation and Post-Litigation Conduct

Seagate further refined the analysis by distinguishing between pre-litigation and post-litigation conduct when assessing willfulness:

1. Pre-Litigation Conduct: A showing of objective recklessness is required for pre-litigation conduct to establish willfulness. This means that the infringer must have acted with a disregard for the high likelihood that their actions constituted infringement.
2. Post-Litigation Conduct: For conduct that occurs after litigation has started, the patentee must seek a preliminary injunction to allege willful infringement based solely on post-filing activities. The Court explained that if the patentee does not attempt to stop the alleged infringer’s activities through a preliminary injunction, it is not reasonable to later seek enhanced damages solely based on the infringer’s actions after litigation began. Moreover, if the patentee does attempt to secure a preliminary injunction but fails, this likely indicates that the alleged infringement did not meet the threshold of objective recklessness required for willfulness.

Attorney-Client Privilege and Work Product Waiver

In Seagate, the court also clarified issues related to waiver of privilege:

• Waiving attorney-client privilege and work product protection for opinion counsel does not extend to trial counsel. This distinction allows a defendant to use advice-of-counsel defenses related to opinion counsel without forfeiting protections for trial counsel communications, preserving strategic and litigation-sensitive information.

Key Takeaways

1. Objective Recklessness as the Standard: Willfulness now requires proof of objectively reckless behavior rather than a duty of due care.
2. Importance of Preliminary Injunctions for Post-Litigation Conduct: To allege post-litigation willfulness, a patentee must seek a preliminary injunction; failing to do so or failing to obtain one weakens the basis for claiming willful infringement post-filing.
3. Limited Waiver of Privilege: Seeking advice-of-counsel does not waive attorney-client privilege or work product protections for communications with trial counsel.

This framework provides clarity on how willfulness in patent infringement is evaluated before and after litigation begins, emphasizing the need for clear, objective evidence of reckless conduct for enhanced damages. For guidance on navigating willfulness issues in patent litigation, feel free to reach out at (949) 433-0900. As an experienced patent attorney serving Orange County, Irvine, Los Angeles, San Diego, and surrounding areas, I’m here to assist with all aspects of patent strategy and enforcement.