Publications

INTRODUCTION

Almost every patent infringement complaint includes a boiler-plate notice- pleading-style charge of “willful infringement.”¹ If proven, this charge can be the basis for an award of enhanced damages up to three times the actual damages, at the discretion of the trial court.² However, in addition to the monetary risk that such a charge brings, the inclusion of a willful infringement charge raises a significant practical dilemma for accused infringers.

Under the current legal framework of the doctrine of willfulness, a charge of willful infringement puts the state of mind of the defendant at issue; and the question as to whether the accused infringer’s infringement was “willful” often puts at issue that party’s communications with its patent counsel. A long-standing defense to a charge of willful infringement has been the “advice of counsel defense,” i.e., that upon learning of the patent, the accused infringer consulted with patent counsel, and relied upon a competent opinion of counsel that the patent was invalid, not infringed, or not enforceable. Effectively defending against willfulness by relying on a competent well-reasoned opinion of counsel requires some waiver of the attorney-client privilege to allow the patent-owner discovery as to how the opinion and related communications affected the state of mind of the accused infringer. This necessarily injects complex waiver of attorney-client privilege and work-product immunity issues into the case.
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