Patent owners, suing for infringement of their patents, routinely include an allegation that the defendant’s actions were “willful” and demand treble damages as recompense for this dastardly conduct. Sometimes, however, the circumstances are such as to make the patent owner look, at best, foolish. (Advanced Fiber Technologies Trust v. J&L Fiber Services, Inc.)
Advanced repeatedly accused a competitor, J&L, of patent infringement. Each time, J&L responded that the subject patent was invalid and that, in any event, the accused product did not infringe the patent. Advanced thereupon sought reissue of the patent in question. Upon receipt of a Notice Of Allowance, but before the actual issue of the reissue patent, Advanced sued J&L. The complaint contained the usual boilerplate allegation of “willfulness” and the corresponding demand (actually called a “prayer for relief”) for treble damages.
J&L moved for a summary judgment dismissing the claim of willful infringement. Motion granted. A willfulness claim “must necessarily be grounded exclusively in the accused infringer’s pre-filing conduct.” “J&L could not have willfully infringed … claims which did not issue until after this suit was filed. Similarly, because the scope of the patent and the meaning of … key [claim] terms … only became apparent and/or took on new meaning during prosecution of the reissue … J&L could not have been acting ‘despite an objectively high likelihood that its actions constituted infringement of a valid patent.’”
Incidentally, we fail to understand how J&L could have infringed unissued claims at all, much less infringed them willfully.
THE LESSON TO BE LEARNED: If you must use boilerplate, at least try to insure that it’s applicable.
Another lesson to be learned: Timing is everything. Might not this case have had a different resolution, if Advanced had waited until the reissue was complete?