Willful Patent Infringement In Patent Law

The term “willful patent infringement” refers to copying or using an invention without permission, despite being aware that it is protected. The concept was highlighted in Underwater Devices Inc. v. Morrison-Knudsen Co. (1983), which was among the first cases to address this issue. Since then, courts have refined the standards for intentional infringement, patent protection, and the type of documentation and evidence required to establish or defend against infringement claims.

In Underwater Devices Inc. v. Morrison-Knudsen Co., the true patent owner (UDI) accused Morrison of infringing its patents 417 and 682. The patented invention was necessary for an underground sewer project on which Morrison bid. UDI warned Morrison that using the technology without a license would incur patent fees. Despite receiving this notice, Morrison sought external legal advice, which suggested that UDI’s claims were invalid due to prior publication. Morrison proceeded to use the patented technology for a year before formally refusing to pay royalties. The court ruled that Morrison knowingly violated the patent and held them liable for damages and royalties.

Later, in the Seagate decision (2007), the court examined how willful infringement should be determined. Convolve Inc. had filed a lawsuit against Seagate, which had relied on independent legal counsel to argue that the claims were questionable. When litigation began, Seagate disclosed its attorney communications in its defense. This raised important questions about attorney-client privilege and its role in proving or disproving willful infringement.

How Should Willful Patent Infringement Be Determined?

After Seagate, several key issues were clarified:

• Should attorney-client privilege be waived in order to evaluate evidence of willful infringement?
• How should courts assess cases where such privilege remains intact?
• Should the earlier Underwater case standards be reconsidered in light of Seagate?

The rulings emphasized that stronger proof is required to establish willful infringement. Specifically:

• Legal advice cannot be used as a shield unless infringement has already been alleged.
• The patent owner has a duty to take action (e.g., through injunctions) if they are aware of ongoing infringement.
• Damages cannot be sought for actions taken before the infringement lawsuit was filed without compelling proof.

Courts also clarified the importance of distinguishing pre-filing and post-filing conduct. Opinion from legal counsel may guide commercial decisions, but attorney-client privilege should remain protected. Testimony from outside counsel, as in the Seagate case, was found to have limited impact. Ultimately, if the patent owner cannot demonstrate clear infringement, the claim of willful violation does not stand.

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