Court Concludes That Pre-Suit Notice For Willfulness Can Occur Even If Notice Was Provided By Third-Party And Not Patent Owner

• Published date: 17 October 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jeffer Mangels Butler & Mitchell LLP
• Author: Mr Stanley Gibson

Arigna filed a patent infringement action against various vehicle manufacturers that alleged infringement of U.S. Patent No. 7,397,318 ("'318 Patent"). The '318 Patent is direct toward a voltage control oscillator for use in a microchip incorporated in radar modules provided by vehicle parts manufacturer Continental.

After Toyota notified Continental of the lawsuit, Continental filed a declaratory judgment action and Arigna amended its complaint to include Continental as a defendant. The defendants subsequently filed a summary judgment motion with respect to the claim for willful infringement.

In analyzing the motion for summary judgment, the district court explained that "Enhanced damages under ' 284 are predicated on a finding of willful infringement." SRI Int'l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1310 (Fed. Cir. 2019) ("SRI II"). Willful infringement is a question of fact merely requiring a finding of deliberate or intentional infringement. SRI Int'l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1330 (Fed. Cir. 2021), cert. denied, 142 S. Ct. 2732 (2022) ("SRI IV") (citing Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020)); WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016) ("We do not interpret Halo [Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923] as changing the established law that the factual components of the willfulness question should be resolved by the jury.").

The district court also explained that "[w]illful infringement impliedly requires knowledge of the patent in suit. WBIP, 829 F.3d at 1341 (Fed. Cir. 2016) (citing Halo, 136 S.Ct. at 1932-33). Further, evidence of knowledge of the patents in suit and intent sufficient to establish deliberate or intentional conduct may be inferred from circumstantial evidence. See Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016) ("knowledge of infringement can be inferred from circumstantial evidence"); WCM Industries, Inc. v. IPS Corporation, 721 Fed.Appx. 959, 970 (Fed. Cir. 2018) ("whether an act is 'willful' is by definition a question of the actor's intent, the answer to which must be inferred from all the circumstances.") (emphasis original) (cleaned up) (quoting Gustafson, Inc. v. Intersystems Industrial Products, Inc., 897...