W.D. Wisconsin: "Significant Support" for Non-Infringement Vitiates Willfulness

Franklin Electric Co., Inc. v. Dover Corp. (05-C-598-S), November 15, 2007

Franklin sued Dover for infringing its patents related to underground tanks. The district court found in favor of Dover on summary judgment, ruling that Dover's products did not infringe. On appeal (link), the CAFC reversed the district court's claim construction and remanded for further proceedings.

In the remanded case, Franklin reasserted willful infringement, claiming that (1) Dover made previous attempts at licensing the technology from Franklin's predecessor prior to the lawsuit, (2) no advice of counsel was obtained, and (3) Dover ignored Franklin's letters accusing it of infringment. In light of Seagate, the district court found that, as a matter of law, no willfulness could be inferred:

Defendant points primarily to this Court’s first summary judgment decision as conclusively establishing that there was not an objectively high likelihood of infringement. Plaintiff points to defendant’s failure to seek advice of counsel prior to selling the accused devices, defendant’s efforts to obtain a license from plaintiff’s predecessor, customer demand for a waterproof system and letters from the patentee accusing defendant of infringement. Plaintiff argues that this evidence establishes willfulness.

All of the evidence advanced by plaintiff goes to the second component of the Seagate test – what defendant knew or should have known with respect to the likelihood of infringement. That plaintiff accused defendant of infringement or defendant sought a license has no bearing on whether there was an objectively high likelihood that its product infringed. It goes to the defendant’s knowledge and state of mind, which Seagate holds irrelevant to the objective inquiry. The infringement analysis in the first summary judgment decision goes to the objective inquiry of the likelihood of infringement. Regardless of the contrary decision of the Appeals Court, the analysis establishes defendants’ conduct in selling its product was not reckless in the sense that there was an “objectively high likelihood” that its actions were infringement. Given the significant support in the language of the patent, the specification and prosecution history for defendant’s noninfringement position, plaintiff cannot meet its burden to prove objective recklessness by clear and convincing evidence.

View/download the opinion here (link)