A somewhat common summary judgment motion late in patent cases is one that seeks summary judgment as to the plaintiff’s claims of willful infringement. This case provides a useful example of a ruling on such a motion which is, at least in part, aptly summarized by Collin’s shirt – “I Can Only Please One Person Each Day – Today’s Not Your Day (Tomorrow doesn’t look good either)”. Behind Collin is one of the Rose windows at Notre Dame de Paris, which we learned earlier today … are still standing.
Two of patent litigants’ favorite topics come together in this afternoon’s essay by Judge Payne ruling on a defendant’s motion for partial summary judgment of willful infringement. (Ever wonder why “infringement” has an “e” and “judgment” doesn’t? I have, but just the once). So crack open a peanut butter cup, and let’s see what the Court had to say.
It’s often helpful to cut something open to see how it works. During World War II, the Navy cut open a damaged PBY Catalina flying boat and mounted it on a wall in a training facility in Pensacola to help train sailors who would be crewing its sister craft. The cutaway PBY was a local fixture from 1944 to 1997, and was eventually moved to the nearby National Museum of Naval Aviation to sit under a fully restored version, where my youngest son Parker (who’s a certified WW II plane nut) got to study it up close. (That I have a PBY on my work bench at the moment had nothing to do with the trip. Honest)
Readers will recall that I posted last month that a Marshall jury in Judge Roy Payne’s court returned a verdict last month in favor of Ericsson in a case brought against TCL Communications and set damages at $75 million. Two of the numerous pretrial rulings in that case were on the defendant’s motions for summary judgment under Section 101, and on the plaintiff’s claims of willful infringement, both of which Judge Payne denied.
Since the 101 ruling runs against the recent trend of more than half of 101 rulings going the defendant’s way, it is worth a review. But the one I really want to focus on is the willfulness ruling because, as the Court wrote, “it is helpful to explain the standard as it stands today [post-Halo]” which began a metaphorical popping off of the fuselage panels on the standard in order to spend several pages poking around on what the wilfulness standard requires, and what factors need to be considered when deciding whether to bifurcate a willfulness claim. When you’re done reading it, you might find yourself with the same thought I had after studying the interior of a full-size PBY – I have really not understood how this thing fits together, and I have really screwed up ….
This opinion passing on a defendant’s motion for summary judgment as to a plaintiff’s claims of willful infringement dealt with a couple of interesting issues regarding the necessary prerequisites for a claim of willful infringement.
Earlier this year a Marshall jury in visiting CAFC Judge Bill Bryson’s court rendered a $20 million verdict in favor of the plaintiff against defendant Eli Lilly. Several weeks ago Judge Bryson followed up with an order explaining his reasons for several decisions during trial.
Judge Bryson’s order is an example of what I referred to in my talk about JMOLs week before last at Horseshoe Bay as a “whale fall” – the sort of order that can take weeks to fully digest, but if you’re interested in the subject of getting a JMOL on a plaintiff’s claims of willful infringement or on when certain jury instructions are appropriate or how prejudgment interest is calculated it’s worth it.
Our story begins with the defense counsel rising at trial to assert a JMOL as to the plaintiff’s claim of willful infringement…