[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=9194570733323971805hl=enas_s
dt=6as_vis=1oi=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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