Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

Proving Willful Infringement: In re Seagate Technology, LLC

By John M. Cone
September 27, 2007

Many complaints for patent infringement allege that a defendant's conduct is willful, justifying an award of enhanced damages. The Seagate Technology decision substantially increases the difficulty of proving willful infringement. In re Seagate Technology, LLC, 2007 WL 2358677 (Fed. Cir. 2007).

For many years, Federal Circuit precedent following Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), placed on a potential infringer with actual notice of another's patent an affirmative duty to determine whether infringement is occurring. The affirmative duty included the duty to seek competent legal advice from counsel before starting the possibly infringing activity. If a defendant did not disclose an exculpatory counsel's opinion, Federal Circuit precedent allowed an adverse inference to be drawn, namely that no opinion had been obtained, or that the opinion was adverse. A party defending an allegation of willful infringement would thus face a difficult decision ' maintain the attorney/client privilege as to counsel's advice and opinions on infringement and validity and risk a finding that it had failed to exercise due care, or rely on the advice but waive privilege as to the opinion, the communications with opinion counsel, and that counsel's work product.

This premium content is locked for LJN Newsletters subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
The DOJ's Corporate Enforcement Policy: One Year Later Image

The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.

The DOJ's New Parameters for Evaluating Corporate Compliance Programs Image

The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.

Use of Deferred Prosecution Agreements In White Collar Investigations Image

This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.

Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Compliance Officers: Recent Regulatory Guidance and Enforcement Actions and Mitigating the Risk of Personal Liability Image

This article explores legal developments over the past year that may impact compliance officer personal liability.