Willful Infringement and Injunctions at the E.D. Tex.

i4i Ltd. v. Microsoft, No. 6:07CV113 (E.D. Tex., August 11, 2009, order) (L. Davis)

In May, a jury found that Microsoft willfully infringed i4i's patent relating to the processing of XML documents with custon XML elements, and awarded i4i $200M in damages. A flurry of post-trial motions followed, among which was a motion by i4i for a permanent injunction, and a JMOL motion by Microsoft to negate the finding of willful infringement.

On the issue of willful infringement, Microsoft argued that the fact that pretrial summary judgment was granted on certain asserted claims, i4i's voluntary dismissal of other claims, and defenses asserted at trial precluded willfulness liability entirely under Seagate.

Judge Davis disagreed:

Microsoft’s arguments are premised on an overly broad reading of Seagate. It argues that the objective prong of the willfulness analysis is met if and only if a defendant failed to present valid defenses during the infringement proceedings . . . most disturbingly, Microsoft’s arguments invite the Court to adopt a view of willful infringement that would allow an accused infringer to stay willfully ignorant despite a high likelihood that its actions infringe a valid patent. Such a view would allow an infringer to escape a finding of willfulness regardless of its conduct at the time the infringement began as long as it presented many defenses after a formal action was filed. Such a view is inconsistent with both Seagate and generally accepted legal principals regarding “objective” legal analysis.

On the subjective prong, Judge Davis focused on whether Microsoft "knew or should have
known" of the likelihood that their actions would infringe:

As Microsoft does not argue (and did not argue to the jury) that any of these “defenses” would have been apparent and considered by a reasonable person in Microsoft’s position prior to its infringing activity, these arguments are irrelevant and inappropriate. Furthermore, the pretrial summary judgment and i4i’s voluntary dismissal of accused products are irrelevant to the remaining claims that the jury found were valid and the remaining products that the jury found were willfully infringing. Additionally, Microsoft’s remaining defenses of invalidity were rejected by the jury and i4i presented sufficient evidence to support its infringement and validity positions.

Second, Microsoft argues that i4i presented insufficient evidence under the subjective prong of Seagate. Microsoft effectively argues that anything short of a “cease-and-desist” letter would be ineffective to put it on notice of an objective risk of infringement. In fact, i4i presented sufficient evidence, both direct and circumstantial, that Microsoft was aware of the likelihood that its activities were infringing.

On the issue of i4i's motion for a permanent injunction, the court applied the 4-factor eBay test and found that an injunction was warranted:

First, i4i has overwhelmingly shown that it has been irreparably injured by Microsoft’s continuing infringement of the ‘449 patent and could not be compensated with monetary damages. The fact that there is direct competition in a markplace weighs heavily in favor of a finding of irreparable injury . . . Simply because i4i adapted to a market where Microsoft fills 80% of the market space does mean that i4i has not suffered an irreparable injury. The evidence shows that i4i lost a, perhaps irretrievable, opportunity in the early days of the custom XML market. See PX 172. This continuing loss of market share and brand recognition is the type of injury that is both incalculable and irreparable.

[T]he balance of hardships also favors i4i. As i4i notes, Microsoft is the world’s largest software company with yearly revenues exceeding $60 billion. . . . i4i’s business is comprised almost exclusively of XML authoring products based off of the ‘449 patent . . . Thus, the evidence clearly indicates that while custom XML is a small fraction of Microsoft’s business, it is central to i4i’s.

[Wi]th regard to the public interest, i4i does not request that Microsoft disable infringing WORD products that are sold prior to the effective date of any injunction. i4i also indicated at the hearing, that it would be amenable to Microsoft providing support to customers who purchased infringing WORD products before the effective date of its proposed injunction. Thus, i4i’s proposed injunction would have little effect, if any, on the daily operations of Microsoft’s current customers. In addition, where products do not relate to a significant compelling public interest, such as health or safety, this factor weighs in favor of an injunction.

To read more, download the (65-page) opinion here (link)

D. Del.: "Sustainable, Reasonable" Defenses Enough to Negate Willfulness

Honeywell International Inc. v. Universal Avionics Systems Corp., No. 02-359-MPT, November 12, 2008

Honeywell sued Universal over five patents dealing with aviation warning systems. After trial and appeal to the CAFC, the case was remanded. On remand, Universal filed a motion for summary judgment of no willful infringement.

Honeywell opposed the motion for a number of reasons:

-- Universal admitted that it knew of Honeywell's patent when it released its own system ("TAWS");

-- Universal claimed that a noninfringement opinion was obtained (pre-litigation), but no written record existed to corroborate the findings, and no explanation could be given why no legal issues existed with the patent;

-- During earlier negotiations with a 3rd party (Collins), Universal was asked for, but did not provide, a noninfringement opinion letter. Universal did agree to indemnify for patent infringement.

Universal countered that (1) Honeywell had, and failed to meet, the burden of establishing willful infringement by clear and convincing evidence, and (2) the defenses raised by Universal during litigation showed that they behaved in an objectively reasonable manner.

The district court agreed with Universal:

The unrefuted testimony . . . shows that before going to market with the TAWS product, Universal performed a patent review which included technical and legal analyses . . . After consulting with patent counsel, Universal understood that no legal issues arose in relation to TAWS for any patent that was reviewed. That understanding is confirmed by Glaze's uncontroverted testimony that further implementation of the TAWS product by Universal would not have continued if the system infringed a third party's patent. A prelitigation patent review may be more relevant to the second prong of the Seagate test (whether the alleged infringer knew or should have know of the objectively-defined risk of infringement); however, performing a patent review before entering the market with a new device evidences that Universal's conduct was not reckless. Further, knowledge of a patent does not mean willfulness.

During the licensing discussions between Universal and Collins, Honeywell filed the present action. Since this litigation followed on the heels of Collins' request for an opinion of counsel on infringement, the court does not see how Universal not producing such a letter constitutes objective recklessness or an admission of infringement. Production of such a letter to a third party would operate as a waiver of the attorney client privilege, and could directly effect litigation strategy . . . Universal's indemnification offer refutes the second prong of Seagate, that it knew, believed or should have known that TAWS could infringe.

[T]he present matter is not just at the first summary judgment stage, but has undergone a summary judgment, trial and post trial review by this court, as well as, a review by the Federal Circuit. The legal issues in the case have already been vetted by two courts. This court, under its claim construction, found that Universal did not infringe. It also held that a number of the patent claims were anticipated. Such findings validate that Universal had legitimate defenses to Honeywell's infringement claims. Although this court did not agree with Universal on its other invalidity defenses, an exhaustive analysis was required, particularly of the onsale and public use bars, to reach a conclusion. This court's analysis of Universal's defenses to the patents show that its arguments were "substantial, reasonable, and far from the sort of easily-dismissed claims that an objectively reckless infringer would be forced to rely upon."

Motion for summary judgment granted

Read/download the opinion here

Seagate Wipes Out Willfulness in the ND Illinois

Trading Technologies International Inc. v. eSpeed, Inc. (04 C 5312), Jan. 3, 2008

At trial, the court instructed the jury in light of the Seagate standard on willfulness. After trial, the jury rendered a verdict that defendants willfully infringed plaintiff's patents. The defendants moved for a judgment as a matter of law that their conduct was not willful.

The district court agreed with the defendants:

First, we find that plaintiff did not meed its burden of demonstrating that defendants acted despite an objectively high likelihood of infringement. When defendants first launched [the allegedly infringing product], plaintiff's patent had not yet issued. While defendants knew of plaintiff's patent application, this knowledge alone is not enough to demonstrate willfulness . . . Thus, the focus of a willfulness determination is generally on post-patent, rather than pre-patent conduct.

Here, plaintiff failed to provide any evidence of post-patent conduct indicative of willfulness . . . [o]nce defendants became aware of the patent there were no further sales, and they immediately began a redesign, resulting in a product that was on the market within five months of the patent's issuance, and which this court found did not infringe the patent. Plaintiff argues that during that period defendants should have pulled their infringing product from the customers who had already purchased it, or disabled the infringing screen. However, plaintiff offered no evidence that defendants could have done so. Thus, even if the likelihood of infringement could be considered objectively high, plaintiff adduced no evidence that defendants acted despite that likelihood.

The plaintiff argued that defendants' failure to assert a non-infringement defense demonstrated that they acted "despite an objectively likelihood of infringement." The district court disagreed, relying in part on the decision in Broadcom Corp. v. Qualcomm Inc. 2007 U.S. Dist. LEXIS 86627 (C.D. Cal. Nov. 21, 2007), which noted:

[w]hile a jury might find as a matter of fact that the absence of a reasonable belief of non-infringement or the invalidity on the patent in suit might on some records lead to a conclusion of disregard of an objectively high likelihood of infringement, that conclusion is hardly compelled. The two standards are not identical, even if there might be some theoretical overlap.

Thus the district court found in this situation that the analysis better rests with the consideration of defendant's subjective intent (that defendants knew or should have known of the objectively high likelihood of infringement). However, the district court noted that "the Federal Circuit provided little guidance to courts as to how to meld the new standard with a consideration of the totality of the circumstances."

Turning to the case at hand, the court noted:

Though in its preliminary injunction order this court stated that defendants appeared not to assert non-infringement of their original product, we note that the preliminary injunction inquiry did not focus on that product since it was no longer on the market. Additionally, defendants' answer to plaintiff's complaint denied that any product infringed. Furthermore, validity of plaintiff's patents has been hotly contested in this litigation. We find on this record that defendants sufficiently asserted defenses to infringement and those defenses were neither unreasonable nor frivolous.

[P]laintiff also offered [evidence noting] that defendants, like all the other independent software vendors, were attempting to create programs similar to plaintiff's in order to stay competitive. This evidence does not rise to the level of egregious copying . . . [r]ather, "[t]his is classic commercial gamesmanship under the patent system . . . not the kind of behavior courts have categorized in the past as willful infringement."

View/download the opinion here (link).

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)

N.D. Cal.: "Close" Case VItiates Willful Infringement under Seagate

Informatica Corp. v. Business Objects Data Integration, Inc. (02-03378) N.D. Cal., October 29, 2007

Jury trial in this patent infringement case commenced on March 12, 2007 and concluded with a verdict in favor of Informatica in the amount of $25,240,000 on April 2, 2007. On August 16, 2007, the Court denied Defendant’s Renewed Motion for JMOL and granted Defendant’s Motion for New Trial on damages unless Plaintiff accepted the Court’s remittitur in the amount of $12,115,200. On September 10, 2007, Informatica accepted the remittitur.

In the meantime (Aug. 20), the CAFC decided In re Seagate (link), which raised the threshold for finding willful infringement. On August 28, Defendant BODI filed a Renewed Motion for Judgment as a Matter of Law or in the Alternative, for the Court to Decline Enhancement of Damages or to Grant a New Trial on Willfulness based on the Seagate decision.

While the court denied BODI's motions, Judge Laporte went ahead to deny any enhancement of damages in the case.

Informatica argued that the district court did not have jurisdiction over the motion because it was not filed within the prescribed time (10 days) after the entry of judgment. The court rejected this argument, stating that no final judgment was made that divested the court of jurisdiction:

[T]he Court has not yet rendered a decision on all the issues as required for a final judgment that may not be revisited unless a party files an appropriate motion within ten days. Moreover, acceptance of Plaintiff’s argument that the Court may only set the amount of enhanced damages at something greater than zero, but may not reconsider Plaintiff’s entitlement to any amount even in light of an intervening change in the law, would elevate form over substance and ignore the wise admonition of Rule 1 of the Federal Rules of Civil Procedure to construe the Rules “to secure the just, speedy and inexpensive determination of every action.” Indeed, the parties agree that if and when the final judgment in this case is appealed to the Federal Circuit, the appellate court will scrutinize the jury’s finding of willfulness under Seagate. The result could be an unnecessary remand and retrial of willfulness under the new legal standard, hardly a speedy or inexpensive result.

On the issue of willful infringement, the court viewed the evidence "in the light most favorable to Plaintiff and drawing all reasonable inferences in its favor," and found that BODI nevertheless willfully infringed Informatica's patent. Nevertheless, in light of Seagate, the court denied any enhanced damages:

Although willful infringement may authorize the award of enhanced damages, “a finding of willful infringement does not mandate that damages be enhanced, much less mandate treble damages.” . . . In this case, the jury found willfulness based on now-obsolete case law. In Seagate, the Federal Circuit overruled the due care standard for evaluating willful infringement adopted in Underwater Devices Inc. v. Morrison-Knudsen Co. . . . and applied by the jury in this case to determine Defendant’s willfulness. Instead, the Seagate court held that “proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness.”

Considering the totality of the circumstances in light of Seagate, which significantly raised the bar for a finding of willfulness, the Court now declines to award any enhancement in this case. Even at the time when the Court determined that a modest enhancement was appropriate, one of the primary Read factors [Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992)] weighing against a substantial enhancement was the closeness of the case.

Under the Seagate standard, the issue of willfulness becomes even closer; had the Seagate standard been used in this case, Plaintiff might well have lost on willfulness. Moreover, the Court has since determined and Plaintiff accepted a remittitur that represented the high end of damages that a jury might have awarded . . . Based on the totality of the circumstances and in light of Seagate, the Court does not award any enhanced damages in this case.

Read/download the opinion here (link)

In Re Seagate - CAFC Clarifies Attorney-Client Waiver, and then Some . . .

In Re Seagate Technology LLC (misc. docket no. 830), August 20, 2007 (link)

Seagate was sued by Convolve in the SDNY for patent infringement. After the lawsuit was filed, Seagate obtained outside counsel opinions on the patents, and relied on the advice of counsel defense to rebut charges of willful infringement. As a result, the district court held that Seagate waived the attorney-client privilege for all communications between it and any counsel, including its trial attorneys and in-house counsel. It further determined that the waiver began when Seagate first gained knowledge of the patents and would last until the alleged infringement ceased. The court also determined that protection of work product communicated to Seagate was waived.

In a rare en banc unanimous opinion, the CAFC set out and answered the following questions:

QUESTION #1: Should a party’s assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party’s trial counsel? See In re EchoStar Commc’n Corp., 448 F.3d 1294 (Fed. Cir. 2006).

ANSWER: The CAFC concluded that, normally, the waiver does not apply to trial counsel:

[W]e conclude that the significantly different functions of trial counsel and opinion counsel advise against extending waiver to trial counsel. Whereas opinion counsel serves to provide an objective assessment for making informed business decisions, trial counsel focuses on litigation strategy and evaluates the most successful manner of presenting a case to a judicial decision maker . . . fairness counsels against disclosing trial counsel’s communications on an entire subject matter in response to an accused infringer’s reliance on opinion counsel’s opinion to refute a willfulness allegation.

* * *

[W]e hold, as a general proposition, that asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege for communications with trial counsel. We do not purport to set out an absolute rule. Instead, trial courts remain free to exercise their discretion in unique circumstances to extend waiver to trial counsel, such as if a party or counsel engages in chicanery.

QUESTION #2: What is the effect of any such waiver on work-product immunity?

ANSWER:

[W]e hold that, as a general proposition, relying on opinion counsel’s work product does not waive work product immunity with respect to trial counsel. Again, we leave open the possibility that situations may arise in which waiver may be extended to trial counsel, such as if a patentee or his counsel engages in chicanery. And, of course, the general principles of work product protection remain in force, so that a party may obtain discovery of work product absent waiver upon a sufficient showing of need and hardship, bearing in mind that a higher burden must be met to obtain that pertaining to mental processes.

QUESTION #3: Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?

ANSWER: In Underwater Devices, the CAFC fashioned a standard for evaluating willful infringement:

"Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing. Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity."

After reviewing SCOTUS precedence since Underwater Devices, the CAFC concluded:

Underwater Devices sets a lower threshold for willful infringement that is more akin to negligence. This standard fails to comport with the general understanding of willfulness in the civil context . . . and it allows for punitive damages in a manner inconsistent with Supreme Court precedent . . . Accordingly, we overrule the standard set out in Underwater Devices and hold that proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness. Because we abandon the affirmative duty of due care, we also reemphasize that there is no affirmative obligation to obtain opinion of counsel.

[T]o establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent . . . The state of mind of the accused infringer is not relevant to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer. We leave it to future cases to further develop the application of this standard.

Gajarsa (concurring opinion, joined by Newman):

I write separately to express my belief that the court should take the opportunity to eliminate the grafting of willfulness onto section 284. As the court’s opinion points out, although the enhanced damages clause of that section "is devoid of any standard for awarding [such damages]," this court has nevertheless read a willfulness standard into the statute . . . Because the language of the statute unambiguously omits any such requirement, see 35 U.S.C. § 284 ("[T]he court may increase the damages up to three times the amount found or assessed."), and because there is no principled reason for continuing to engraft a willfulness requirement onto section 284, I believe we should adhere to the plain meaning of the statute and leave the discretion to enhance damages in the capable hands of the district courts.

SAY HELLO TO PRELIMINARY INJUNCTION PRACTICE:

The CAFC opined that preliminary injunctions may be the best (and only?) place to flesh out post-filing willfulness, and the failure/success of the injunction will likely determine the chances that willfulness will subsequently be found:

[W]hen an accused infringer’s post-filing conduct is reckless, a patentee can move for a preliminary injunction, which generally provides an adequate remedy for combating post-filing willful infringement . . . A patentee who does not attempt to stop an accused infringer’s activities in this manner should not be allowed to accrue enhanced damages based solely on the infringer’s post-filing conduct. Similarly, if a patentee attempts to secure injunctive relief but fails, it is likely the infringement did not rise to the level of recklessness.

We fully recognize that an accused infringer may avoid a preliminary injunction by showing only a substantial question as to invalidity, as opposed to the higher clear and convincing standard required to prevail on the merits . . . However, this lessened showing simply accords with the requirement that recklessness must be shown to recover enhanced damages. A substantial question about invalidity or infringement is likely sufficient not only to avoid a preliminary injunction, but also a charge of willfulness based on post-filing conduct.

What Hath the SCOTUS Wrought? Willful Infringement In a Post-Ebay World

In the case of Paice LLC v. Toyota Motor Corporation, the E.D. Texas found that Toyota infringed Paice's patent. Since Ebay, permanent injunctions are no longer granted as a matter of course, and the district courts must use the four-factor test to determine a proper equitable remedy.

In Paice, the district court decided that, since Paice did not produce products that competed with Toyota, an injunction was not an appropriate remedy. Instead, the court ordered that each future sale of a subject vehicle by Toyota would require a $25 per vehicle royalty to Paice. This number was based off of a reasonable royalty that the jury determined would have been agreed upon by the parties in a hypothetical negotiation at a time just prior to first infringement.

The problem here is that the Ebay court provided no guidance on what types of remedies are appropriate for the court to consider, and how the remedies are applied.

According to Paice, the reasonable royalty may have been acceptable for "regular" infringement, but it is not appropriate for ongoing, post-verdict, infringement. Since the district court's royalty is tantamount to a compulsory license, Paice argues that such a remedy is contrary to judicial precedence and 35 U.S.C. § 283. Also, Paice argues that since a compulsory license relates to damages, Paice is entitled to a jury trial under the 7th Amendment to determine the appropriate number for future damages:

Toyota erroneously asserts that once Paice made a request for equitable relief, the district court was free to fashion any remedy it chooses, including entry of a compulsory license for future infringement . . . If this position were correct, there would be no limitation on the remedies available because virtually all patent cases include a request for some equitable remedy. The right to a damages trial before a jury would not exist, and yet the law is clear that the Seventh Amendment requires that a district court submit damages to a jury.

***

Toyota's argument assumes that Paice is only entitled to the same reasonable royalty rate the jury calculated for past damages. That amount is what the jury found a willing licensor and willing licensee would have agreed upon in a hypothetical negotiation from the time infringement began to trial . . . It cannot, and should not, be used for calculating a future royalty rate in a prospective compulsory license. This standard fails to take into account the potential for future lost profits, loss of potential value in granting an exclusive license, and the ongoing willful infringement that would occur by Toyota. Though an injunction has not been entered, Toyota's decision to commit ongoing willful infringement of a valid United States patent, because it is so essential to the success of its product, should be considered in setting a royalty rate. A district court may find that it should not permanently enjoin an adjudged infringer from selling infringing goods. However, the infringer should still have to account for its choice to continue willfully infringing if it chooses to do so.

In response, Toyota argues that the license was appropriate under section 283, which authorizes courts to award patentees prospective injunctive relief "in accordance with the principles of equity . . ., on such terms as the court deems reasonable." Since the equitable jurisdiction of the court was properly invoked for injunctive purposes, "[t]he court has the power to decide all relevant matters in dispute and to award complete relief even though the decree includes that which might be conferred by a court of law [i.e., monetary damages]."

Because the prospective damages were awarded as part of the equitable jurisdiction of the court, Toyota argues that Paice is not entitled to a jury trial.

Oral Arguments are scheduled for May 7, 2007 (2006-1610)

See Paice's Brief here.

See Toyota's Brief here.

CAFC Orders Review of EchoStar Waiver of Privilege

In re Seagate Technology LLC - January 26, 2007 The Federal Circuit issued a sua sponte order on Friday to address the following questions en banc:

(1) Should a party's assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party's trial counsel? See In re EchoStar Commc'n Corp., 448 F.3d 1294 (Fed. Cir. 2006).

(2) What is the effect of any such waiver on work-product immunity?

(3) Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?

Pursuant to new policy, the CAFC is now posting merit briefs on the web site. In the order, the court indicated that briefs of amici curiae will be entertained in accordance with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.

• CAFC order
• Petition for Writ of Mandamus
• Opposition
• Reply

Background:

APLF (2001) publication "Discovery and Use of Opinions in Litigation"

Joseph R. Re, "Litigating the Issue of Willful Patent Infringement"

See also 1989 IDEA article by Robert L. Baechtold, titled "The Federal Circuit's Views on Attorney Client Privilege, Work Product and Related Items," noting that,

Unfortunately, since discovery orders are ordinarily not final, and therefore not appealable, rulings on privilege rarely reach the appellate level. We may have to wait quite a while for another case involving discovery sought outside the trial forum, facts so clearcut as to justify mandamus, or a respondent brave enough to risk contempt to get appellate review.