Trademark infringement under the Lanham Act does not require a showing of willfulness as a prerequisite for profit disgorgement.
Results for willful infringement
Post-Halo, obtaining invalidity and non-infringement opinions of counsel before litigation can reduce likelihood of willfulness finding if infringement is later proven.
The Federal Circuit does not give even the slightest amount of deference to district court claim constructions, even if based on substantial factual determinations; prompt redesign efforts and complete removal of infringing products in a span of a few months after the lawsuit commenced suggest that the infringer was not objectively reckless.
The previous standard of due care for proving willful infringement, as recited in Underwater Devices, is overruled as inconsistent with other civil jurisprudence and a recklessness standard is imposed. Further, reliance on an opinion of counsel does not waive privilege with respect to a separate and independent trial counsel.
Federal district court, in concluding that defendant willfully infringed patent for gas-fired fireplace burner assembly, did not clearly err in dismissing defendant’s asserted good-faith belief that accused device did not infringe, since defendant made little or no effort to assess whether it infringed, or whether patent was invalid, after receiving notice of patent.
Substantial evidence supports jury’s conclusion that defendant willfully infringed plaintiff’s patent for multimedia data network, since record shows that at least one important technical document was not supplied to defendant’s opinion counsel, since opinion letter cannot negate finding of willful infringement if best information was intentionally withheld from counsel during preparation of opinion, and since evidence therefore supports finding that defendant was not entitled to rely on counsel’s opinion of non-infringement.
Sales of a component used in infringement of a patented method abroad may be considered in a damages award under 35 U.S.C. 271(f). The failure to obtain a legal opinion does not create a negative inference in determination of willful infringement.
In the District Court for the District of Colorado, a jury found that Laboratory Corporation indirectly infringed Metabolite Laboratories, Inc.’s (Metabolite’s) ‘658 patent. The district court doubled the infringement award for willful infringement and issued a permanent injunction.
Limitation in claim directed to remote-controlled search light, which recites “horizontal drive means for rotating said lamp unit in a horizontal direction,” is not limited to device capable of rotating horizontally through 360 degrees, despite written description’s disclosure of assembly capable of such rotation, since nothing in written description requires limiting function to rotation through any particular angle.