Federal Circuit Rewrites Law on 'Advice of Counsel' Defense to Willful Infringement

The Federal Circuit Court of Appeals has just issued an opinion that changes precedent in U.S. patent law, namely, <i>Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Haldex,</i> __ F.3d __ (Fed. Cir. 2004). Previously, for a company that was accused of patent infringement, the general law was that the company had "an affirmative duty to exercise due care" to avoid infringement, including "the duty to obtain competent legal advice from counsel before initiation of any possible infringing activity." <i>Underwater Devices, Inc. v. Morrison-Knudsen Co.,</i> 717 F.2d 1380, 1389-90 (Fed. Cir. 1983). Failure to obtain such legal advice was considered a key factor in determining whether infringement is willful. A finding of willful infringement can be devastating, as it can subject a defendant to enhanced damages (up to three times actual damages) and/or the payment of the plaintiff's attorneys' fees. 35 U.S.C. &sect;&sect;284 and 285.

14 minute read October 08, 2004 at 03:12 PM

By

Rod S. Berman And Steven R. Hansen