By Memorandum Opinion entered by The Honorable Leonard P. Stark in Vehicle IP, LLC v. AT&T Mobility LLC, et al., Civil Action No. 09-1007-LPS (D.Del., December 30, 2016), the Court granted defendants Telecommunication Systems, Inc., Networks in Motion, Inc., and Cellco Partnership (collectively, the "TCS Defendants") motion for partial summary judgment of no willful infringement and denied a number of other motions to exclude and motions for summary judgment or partial summary judgment filed by the parties.
In evaluating the TCS Defendants' motion for partial summary judgment of no willful infringement, the Court recognized that the "willfulness inquiry asks whether a party has engaged in 'conduct warranting enhanced damages,' under 35 U.S.C. § 284, behavior the Supreme Court has described as 'willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or [] characteristic of a pirate.'" Id. at *15. In granting the motion, the Court found that Vehicle IP did "not identify evidence, beyond pre-suit knowledge of the patent, that could show that the TCS Defendants' infringement was 'egregious', 'deliberate,' wanton,' or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the 'punitive' sanction of enhanced damages." Id. at *17. The Court noted that a party's pre-suit knowledge of a patent is not sufficient, by itself, to find willful misconduct of the type that may warrant an award of enhanced damages. Id. Therefore, based on the record before it, the Court concluded that "no reasonable jury could find willful infringement" of the patent-in-suit by the TCS Defendants. Id.
A copy of the Memorandum Opinion is attached.
The general take away is that, in order to make a showing of willful infringement, the patentee must prove, among other things, that the accused infringer acted with a specific intent to infringe. In making that showing, the patentee must present some evidence beyond the accused infringer's pre-suit knowledge of the patent to show that the accused infringer's conduct was egregious, deliberate, wanton, or otherwise characteristic of the type of infringement that warrants the Court exercising its discretion to impose the punitive sanction of enhanced damages. For example, in making its showing, the patentee should consider presenting evidence to show that (1) the accused infringer intentionally and specifically relied on the pre-suit knowledge of the patent in developing its infringing products; and/or (2) the accused infringer hired a specific employee who previously worked for the patentee because of his or her specific knowledge of the patented invention. The patentee should be mindful of the record and make sure that it contains sufficient evidence of the infringer's specific intent to infringe and "willfulness" in order to survive a partial motion for summary judgment of no willfulness and to get the issue to the jury.
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