Willful Patent Infringement as Pled Need Not Be Egregious

While enhanced damages for willful patent infringement may be based on egregious misconduct, a plaintiff can support a pleading of willful infringement by alleging the defendant’s intent, and without a necessarily pleading facts amounting to egregious misconduct.  Bio-Rad Laboratories, Inc. v. Thermo Fisher Scientific Inc., No. 1-16-cv-00358 (D Del. Jan 31, 2017).  Thus, the plaintiff in this case survived a Rule 12(b)(6) motion to dismiss its allegations of willful patent infringement.

The court explained that the plead facts were sufficient to allege willfulness:

Bio-Rad's complaint alleges that Bio-Rad gave Thermo Fisher notice of its infringement of the patent-in-suit as early as March 2013.  On January 2014, proposed licensing terms were sent to Thermo Fisher. On May 6, 2015, Bio-Rad sent a letter to Thermo Fisher of a reminder that sales of the accused products constitute infringement of the patent-in-suit. Bio-Rad alleges that Thermo Fisher, or one of its subsidiary or affiliated companies directed the filing of the opposition to a European patent that is a counterpart to the patent-in-suit. Accused products continue to be sold.

(Citations omitted.)

Lessons for Practice

If you know about a patent and could be accused of infringing it, you could be accused of willful infringement.  If you get into litigation, your mere knowledge could be enough to raise the specter of enhanced damages under 35 U.S.C. § 284 and/or the award of attorney fees under 35 U.S.C. § 285.  We do not know whether the defendant in this case has opinions of counsel to insulate itself from charges of willfulness – but as the Supreme Court's Halo decision and other recent case law demonstrates, any party having knowledge of a potentially infringed patent should consider such opinions.  As the present case demonstrates, accused infringers should always be ready to litigate the issue of willfulness.

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