IP Newsflash

A judge in the District of Delaware recently dismissed a plaintiff’s claims for indirect patent infringement and willfulness-based enhanced damages because the complaint alleged knowledge of the patents based solely on the complaint itself.

The U.S. District Court for the District of Delaware recently rejected a plaintiff’s attempt to add to its complaint claims of induced infringement and enhanced damages based on pre-suit conduct. Specifically, the court held that allegations the defendant monitored competitor activity and shielded its employees from reading competitor patents did not support a plausible inference that the defendant knew or was willfully blind to the fact that it had infringed the asserted patents.

Akin Gump published a client alert on the Supreme Court holding in Romag Fasteners Inc. v. Fossil Inc. et al. that a showing of willfulness is not required for a plaintiff to recover a defendant’s profits resulting from trademark infringement under 15 U.S.C. §1125(a). The decision settled a split in the circuits with respect to the requirement of a showing of willfulness in awarding profit damages to a trademark plaintiff. To read the full alert, please click here.

Despite evidence that defendants monitored plaintiffs’ product development and attempted to match its dosing intervals, the District Court of Delaware found no willful infringement because that activity took place before the patents issued and is considered standard within the pharmaceutical industry. Thus, absent additional evidence, defendants’ conduct did not rise to the level of wanton, malicious or bad-faith behavior required to support willfulness.

In a December 13, 2016, order (made publicly available in redacted form on January 5, 2017), the District Court for the Eastern District of North Carolina enunciated a broad waiver of the attorney-client privilege for a party relying on the advice-of-counsel defense to an allegation of willful infringement. The court’s order relied on the Supreme Court’s 2016 Halo decision to allow discovery of post lawsuit communications with opinion counsel, as well as certain communications between and among the defendant, its in-house counsel, opinion counsel and trial counsel. The decision has significant ramifications for parties seeking to rely on noninfringement or invalidity opinions to counter willful infringement claims.

On Wednesday, the District Court for the Northern District of California granted defendant F5’s renewed motion for JMOL that it did not willfully infringe plaintiff Radware’s patent. The court determined that plaintiff failed to submit sufficient evidence to support the jury’s willfulness finding, even under the new preponderance of the evidence standard set forth in the Supreme Court’s Halo decision.

In Stryker v. Zimmer, Stryker filed suit alleging infringement of three patents by Zimmer. The patents relate to devices used to remove damaged tissue and clean bones during joint­replacement surgery. The jury found the three asserted patents to be valid and infringed, and awarded Stryker $70 million in lost profit damages. Following the jury trial, the district court trebled the $70 million award based on Zimmer’s willful infringement, because the court found that: (1) Zimmer “all but instructed its design team to copy Stryker’s products”; (2) Stryker’s patents were pioneering; and (3) the secondary considerations of non­obviousness “made it dramatically less likely that Zimmer’s invalidity arguments were reasonable.” Zimmer appealed.

In an October 14, 2014, decision, the Federal Circuit upheld a judgment of willful infringement and an award of enhanced damages against Citrix Systems, Inc. The case came to the Federal Circuit on cross­appeals from Judge J. Rodney Gilstrap’s court in the Marshall Division of the Eastern District of Texas. At trial, SSL Services LLC asserted that Citrix willfully infringed U.S. Patent Numbers 6,061,796 and 6,158,011. The jury found that Citrix’s “GoTo” software products, which permit direct and secure communication between two computers, infringed the ’011 patent, but not the ’796 patent, and awarded $10 million in damages. The jury also found that Citrix’s infringement of the ’011 patent was subjectively willful and that Citrix failed to prove that the claims of that patent were invalid. The district court awarded an additional $5 million to SSL as enhanced damages for the willful infringement, but declined to give SSL “prevailing party” status for the purpose of awarding costs. Following the district court’s denial of their respective post­trial motions, both parties appealed.