United States: Judge Andrews Grants Alleged Infringing Defendants' Motion For Summary Judgment Related To Damages

By Memorandum Opinion entered by The Honorable Richard G. Andrews in M2M Solutions LLC v. Motorola Solutions Inc., et al., Civil Action No. 12-33-RGA (D.Del., January 6, 2016), the Court granted the motion for summary judgment of Defendants Telit Communications PLC and Telit Wireless Solutions Inc. related to damages after concluding that Defendants were entitled to (1) judgement as a matter of law of no willful infringement, (2) summary judgment of no infringement by products made and shipped outside of the United States, and (3) summary judgment of non-infringement by Defendant Telit Communications PLC.

With respect to the judgment as a matter of law of no willful infringement, the Court noted that, in order to show willful infringement, a patentee must meet the two-part test set forth by the Federal Circuit in In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). Id. at 33. The first prong – the objective prong – 'requires a patentee 'to show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.'" Id. The "objective prong of Seagate tends not to be met where an accused infringer relies on a reasonable defense to a charge of infringement." Id. If the first prong is met, the second prong – the subjective prong – requires the patentee to demonstrate that the objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the infringer. Id. at 34. "If a court finds for the alleged infringer with regard to the first prong, it cannot send the question of willfulness to the jury, since proving the objective prong is a predicate to consideration of the subjective prong." Id.

In the instant action, the Court found that Plaintiff failed to make the necessary and clear showing to meet the first prong because Plaintiff presented no evidence of pre-suit knowledge or conduct tending to establish objective recklessness. Id. at 35. Accordingly, Defendants were entitled to judgment as a matter of law of no willful infringement.

A copy of the Memorandum Opinion is attached.

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