[cross-posted to legal-discuss@apache and license-discuss@opensource]
[The below is my response to someone else's email on another list. It is rather legal/technical, but some of you may now understand why I'm not as afraid of patents as I used to be. I'd like to calm some of you down also and to encourage engineers to be free to read and comment on patents in a NOTICE file. I know that some corporate patent attorneys differ on this. Please speak up. For speed readers there is a two short paragraph conclusion at the very bottom. /Larry] ***** Posting about "willful infringement (treble damages) and reading patents" The important CAFC case, In re Seagate Technology, <http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf> 497 F.3d 1360, 1369 (Fed. Cir. 2007), articulated a two-part test for willfulness in patent infringement: [T]o establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. The state of mind of the accused infringer is not relevant to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer. I read the CAFC decision you referenced in your email: SSL Services, LLC v. Citrix Systems <https://scholar.google.com/scholar_case?case=9194570733323971805&hl=en&as_s dt=6&as_vis=1&oi=scholarr> , 769 F.3d 1073 (Fed Cir. 2014). Even though willful damages were awarded there, I don't think it makes the argument for you. As in all willful infringement cases, facts matter. Citrix was not allowed to use its own Chief Engineer's expert opinions about the patent to justify its opinion about non-infringement. ("As for Murgia's personal beliefs regarding non-infringement, the fact that they were beliefs formed by a lay person without the benefit of the court's claim construction determinations rendered them of little probative value and potentially prejudicial.") Plaintiff SSL proved its willful infringement case, basing its evidence on the Seagate standards. ("We agree that SSL presented substantial evidence that Citrix knew of the objectively high risk that its products infringed the asserted claims of the ′ 011 Patent.") Citrix was proven to have entered into other written agreements that specifically identified and incorporated that patent previously. ("We do not find that the district court erred in denying Citrix's motion for JMOL on the subjective prong of SSL's claim of willful infringement.") The Iowa Law Review article you referenced [Christopher Seaman, <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1751831> Willful Patent Infringement and Enhanced Damages after In re Seagate: An Empirical Study, 97 Iowa L. Rev. 417 (2012)] was also very interesting. I didn't know most of that history of the willfulness doctrine and, as Seaman describes it on page 428, how it resulted in "In re Seagate: The Rise of Objective Recklessness." The empirical study by Seaman used the results of patent cases three years post-Seagate, through July 2010. He only included district court cases and no CAFC appeals. It is of limited empirical value. There's a more recent online article: "Halo v. Pulse <http://www.ipwatchdog.com/2015/01/29/halo-v-pulse-progress-on-willful-infri ngement-law-at-risk/id=54284/> - Progress on Willful Infringement Law at Risk?" published last January. That author, Bart Eppenhauer, acknowledges that Seagate is working and he urges the CAFC to "otherwise refrain from disrupting the progress made with Seagate." Then, on March 23, the CAFC denied Halo's petition <http://patentlyo.com/media/2015/03/13-1472.Order_.3-18-2015.1.pdf> for rehearing en banc. :-) CONCLUSION: None of this even hints that an engineer reading a patent and commenting on it in a NOTICE file is a risky behavior. At least in the open source community, let's please take advantage of this relief provided us by the CAFC in Seagate. Open source engineers should be free to read and write whatever they want about patents. It can't hurt. /Larry <snip>
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