Here's a fun fact for you—in the 7 years since the Supreme Court's decision in Halo, the use of the word "pirate" in Federal Court opinions has increased by 23%. This can probably be attributed to the following passage which shifted the focus of the enhanced damages inquiry from "willfulness" to something a bit looser and more . . . arrrggguable:
The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate . . . .
Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103-04 (2016)
There are worse legacies. But I digress.
The oft-cited loosy-goosy standard above has lead to an interesting split in decisions about how the enhanced damages provision, 35 U.S.C. 284 (which does not specifically reference willfulness), interacts with Section 298 (the only section of the patent act to actually refer to willfulness):
The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent . . .
The question is, once a jury has found willful infringement, can the Court then consider the failure to obtain advice of counsel in determining whether to enhance damages?
Last week, Judge Kennelly held that 298 did not prevent the Court from considering the failure to obtain advice of counsel, and awarded enhanced damages accordingly:
MOSO argues . . . that section 298 of the Patent Act prohibits consideration of "[t]he failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent[.]" 35 U.S.C. § 298. But Easoon is correct that section 298 states only that such a failure "may not be used to prove that the accused infringer willfully infringed the patent," id. (emphasis added), and MOSO has provided no legal support for applying that prohibition in the damage enhancement context. Rather, the Federal Circuit has held that "it is inappropriate to discount evidence relating to whether there was adequate investigation of adverse patent rights." Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1347 (Fed. Cir. 2011), abrogated on other grounds by Halo, 579 U.S. 93.
Dasso Int'l, Inc. v. MOSO N. Am., Inc., No. 17-cv-1574, 2023 U.S. Dist. LEXIS 145805, at *79-80 (D. Del. Aug. 21, 2023)
The only other Delaware opinion I've found addressing the issue is from earlier this year, when Judge Noreika appeared to reach the opposite conclusion:
Plaintiff argues that Defendant failed to form a good-faith belief of invalidity or non-infringement because Defendant did not offer evidence of policies about freedom to operate or advice of counsel opinions. (D.I. 337 at 8). However, "failure of an infringer to obtain the advice of counsel . . . or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent." 35 U.S.C. § 298.
Purewick Corp. v. Sage Prods., LLC, No. 19-1508-(MN), 2023 U.S. Dist. LEXIS 56193, at *41 n.21 (D. Del. Mar. 31, 2023)
Neither party in Dasso cited the opinion in Sage. Casting the net a bit wider, it looks like there's a fair number of decisions from other districts going both ways on the point as well. It's a niche enough issue that it may be a while before the Fed. Circuit chimes in, but we'll keep you posted as we get any new decisions from Delaware.
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