Earlier this week, the Supreme Court issued an order denying certiorari in Bombardier Recreational Products Inc. v. Arctic Cat Inc. As a result, the holding of the underlying Federal Circuit case remains intact. We discussed this case and its implications in a blog post several weeks ago.

Specifically, the Federal Circuit held:

Halo did not disturb the substantive standard for the second prong of Seagate, subjective willfulness. Rather, Halo emphasized that subjective willfulness alone—i.e., proof that the defendant acted despite a risk of infringement that was “‘either known or so obvious that it should have been known to the accused infringer,'” Halo, 136 S. Ct. at 1930 (quoting Seagate, 497 F.3d at 1371)—can support an award of enhanced damages.

Bombardier challenged this holding as amounting to a negligence standard. Arctic Cat disagreed, arguing that the language comes from longstanding Supreme Court precedent defining “recklessness.” Irrespective of the label, the fact remains that willful infringement continues to be assessed according to a “knew or should have known” standard.

What does this mean to innovators and manufacturers? While there are still very few cases that have actually tested the “should have known” portion of the standard after Halo, producers should consider the following items.

  1. First, a notion of slight comfort: mere knowledge of a patent has generally been insufficient to find subjective willfulness. A patentee must typically show that the accused infringer was in some way aware of a risk of infringement or that it was otherwise obvious. However, where the parties are close competitors who frequently assess each other’s patent portfolios, it may be possible for the patentee to demonstrate that the accused infringer should have known about the risk and therefore acted willfully even if it cannot prove direct knowledge of the patent-in-suit.
  2. A “should have known” test necessitates a comparison between an accused infringer’s behavior and what should be expected from reasonable participants in a similar position. Companies should therefore familiarize themselves with relevant industry customs and standards with respect to freedom-to-operate, clearance, and diligence investigations to ensure that they are acting reasonably. If standards are unclear, companies should think about generating internal policies that set forth clear processes for handling and investigating third-party patents.
  3. Well-documented records of investigation are key. It is important to establish early non-infringement and/or invalidity positions reflecting the beliefs of a competent decision-maker that is supported by a reasoned approach. The decision-maker need not be an attorney, but should be someone that has some degree of understanding as to how patents are interpreted.
  4. Consider privilege issues. In some cases courts will grant a bifurcated trial to separate liability issues from damages issues, which would allow a defendant to maintain privilege for the liability case while choosing to waive privilege to defend against a charge of willfulness, if it becomes necessary (this is to address the so-called “Quantum dilemma”). To prepare for the possibility that bifurcation may not be granted, companies should consider how they might build non-privileged documentation that supports a subjective belief of non-infringement, or to compartmentalize privileged information that is intended to be waived if necessary.

We will also be keeping an eye on Corning Optical Comms. LLC v.
PPC Broadband, Inc., in which a petition for writ of certiorari was filed last week. Corning presents essentially the same question as did Bombardier, and also asks whether courts must consider “all relevant circumstances” regarding the infringement, including evidence that the defendant’s position was objectively reasonable in assessing enhanced damages. At first glance, certiorari does not seem likely because one question was already denied in Arctic Cat and the other question does not raise much of a controversial issue. Courts will generally consider the nine Read factors when considering enhanced damages and factor 5 relates to “the closeness of the case,” which is effectively a test of objective reasonableness.