The Federal Circuit raised the bar for willful patent infringement in its August 20 opinion for In Re Seagate Technology. Now plaintiffs must show the infringer acted with “objective recklessness”–overruling the Federal Circuit's 1983 precedent set in Underwater Devices Inc. v. Morrison-Knudsen Co., which gave potential infringers “an affirmative duty to exercise due care to determine whether or not he is infringing.”

Judge Haldane Mayer, writing for a unanimous en banc panel, said the Underwater Devices 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.”

The court also reversed a California federal court ruling that ordered Seagate to turn over its communications with trial counsel to the plaintiff. The Federal Circuit said when a party waives attorney-client privilege for its opinion counsel, it doesn't constitute waiver of attorney-client privilege for trial counsel or work-product privilege.

Seagate used patent analyses from opinion counsel to show it had taken due care to avoid infringement. Plaintiff Convolve Inc. claimed that by doing this Seagate had waived attorney-client privilege and demanded Seagate produce trial counsel opinions and communications as well.

“Because of the fundamental difference between these types of legal advice, this situation does not present the classic 'sword and shield' concerns typically mandating broad subject matter waiver,” Mayer wrote. “… Fairness counsels against disclosing trial counsel's communications on an entire subject matter [because the accused relied on opinion counsel communications] to refute a willfulness allegation.”

The Federal Circuit raised the bar for willful patent infringement in its August 20 opinion for In Re Seagate Technology. Now plaintiffs must show the infringer acted with “objective recklessness”–overruling the Federal Circuit's 1983 precedent set in Underwater Devices Inc. v. Morrison-Knudsen Co., which gave potential infringers “an affirmative duty to exercise due care to determine whether or not he is infringing.”

Judge Haldane Mayer, writing for a unanimous en banc panel, said the Underwater Devices 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.”

The court also reversed a California federal court ruling that ordered Seagate to turn over its communications with trial counsel to the plaintiff. The Federal Circuit said when a party waives attorney-client privilege for its opinion counsel, it doesn't constitute waiver of attorney-client privilege for trial counsel or work-product privilege.

Seagate used patent analyses from opinion counsel to show it had taken due care to avoid infringement. Plaintiff Convolve Inc. claimed that by doing this Seagate had waived attorney-client privilege and demanded Seagate produce trial counsel opinions and communications as well.

“Because of the fundamental difference between these types of legal advice, this situation does not present the classic 'sword and shield' concerns typically mandating broad subject matter waiver,” Mayer wrote. “… Fairness counsels against disclosing trial counsel's communications on an entire subject matter [because the accused relied on opinion counsel communications] to refute a willfulness allegation.”