Winter 2005

By: Meredith Martin Addy, Meredith Martin Addy, Meredith Martin Addy, Meredith Martin Addy, Meredith Martin Addy, Meredith Martin Addy, Meredith Martin Addy, Meredith Martin Addy, and Meredith Martin Addy

IPLAC Newsletter

This article has been reprinted with permission from IPLAC Newsletter, Volume 29, No. 1, Winter 2005. The Intellectual Property Law Association of Chicago can be found at http://www.iplac.org/.

On November 19, 2004, immediately preceding the 110th Annual IPLAC Judges Dinner, Senior Judge James B. Moran, Judge James F. Holderman, and Judge Matthew F. Kennelly, all of the Northern District of Illinois, discussed the possible ramifications of the Federal Circuit’s recent en banc decision in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corporation, 383 F.3d 1337 (Fed. Cir. 2004) (en banc). Federal Circuit Judge Richard Linn also was present and provided his perspective. Knorr-Bremse reversed 20 years of precedent that applied an adverse inference of willful patent infringement to a defendant for failure to obtain or failure to disclose an opinion of counsel on the patent-in-suit.

In Knorr-Bremse, the Federal Circuit reinforced that, although the adverse inference was overruled, a determination of willful infringement is based on the totality of the circumstances. In a trial setting, the Northern District Judges analyzed whether the patentee’s attorney should be permitted to ask the defendant at trial before a jury (1) if he consulted counsel regarding the accused infringement, and (2) if so, what was counsel’s opinion? The Judges agreed that, whether that is an appropriate line of questioning, would depend on the facts of the case. Although the Judges may not have agreed entirely on where to draw the line, they could envision situations where, based on the totality of the circumstances, asking such questions before a jury would be tantamount to an inference of willful infringement, and therefore, should not be allowed. In addition, the judges also could envision situations where, based on a different totality of the circumstances, that line of questioning might be appropriate. The suitable vehicles to address these issues include motions in limine and possibly jury instructions.

The Judges also discussed the meaning of the “duty of due care” in patent cases. The Federal Circuit held that “there continues to be an affirmative duty of due care to avoid infringement of the known patent rights of others.” Knorr-Bremse, 383 F.3d at 1345 (internal quotations omitted). The Judges discussed whether that duty of due care requires a patent infringement defendant to visit his patent attorney, or are there other ways to satisfy the duty? For example, would an analysis done by an employee of ordinary skill in the art (or extra-ordinary skill in the art) satisfy the duty of due care? Many researchers and inventors are extremely familiar with their sector of the industry and might be able to provide their company with an infringement assessment. The strength of such an assessment would depend on the totality of the circumstances, including the employee’s knowledge of the technology and the employee’s knowledge of patent law. Judge Linn agreed that the appropriateness of the duty of due care will continue to percolate up to the Federal Circuit from the district courts and may be the subject of future Federal Circuit decisions.