Brian Higgins at the Maryland IP Law Blog posted an analysis of significant willfulness decisions post-In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007) — click here for the post and click here for a subsequent post discussing Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.). Of the eleven decisions Higgins identified, three were Northern District decisions and one was a Federal Circuit decision analyzing a Northern District case. Here are my posts on the Northern District decisions:
- Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).
- Se-Kure Controls, Inc v. Diam USA, Inc.
- Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jan. 3, 2007) (Moran, Sen. J.).
As you can infer from the relatively small number of cases identified by Higgins, there remains a lot of law to be written about Seagate before the standard is well settled. I suspect that within 18-24 months there will be a relatively large body of law, including numerous Federal Circuit decisions exploring the new standard’s outlines. Until then, patent litigants will face a degree of uncertainty regarding willfulness. Of course, defendants will generally be glad to have some uncertainty in exchange for plaintiffs’s higher willfulness hurdle.
Se-Kure Controls, Inc. v. Vanguard Prods. Group Inc., No. 02 C 3767, 2008 WL 169054 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that this opinion also uses footnote citation.
Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox granted in part a motion to compel discovery regarding defendant’s advice of counsel defense. The Court ordered defendants to product a technical witness that provided opinion counsel information because opinion counsel was unable to remember the substance of conversations between the two.
The Court also ordered production of communications between opinion counsel and trial counsel related to the patent in suit. These communications were within the scope of defendant’s waiver, even though a deposition of trial counsel would not have been allowed.
The Court did not allow plaintiff to take any additional fact depositions. Plaintiff argued it had waited to take certain fact depositions because the witnesses were expected to be Fed. R. Civ. P. 30(b)(6) designers regarding defendants’ willfulness defense. But the Court did not allow the deposition because fact discovery was closed and because plaintiff had deposed other witnesses on the same topics.
The most exciting part of this opinion, however, was its form, not its substance – Judge Cox used footnotes for cites. While this format is infinitely more readable and has many prominent advocates – Brian Garner, the (new) legal writer, Wayne Scheiss and me (perhaps not the most prominent but I am an advocate of footnote citation) – it is a bold move in the typically conservative realm of judicial writing. At least one other Northern District Judge, Chief Judge Holderman, has used footnote citation. If you are aware of other examples, let me know.
Thank you Judge Cox.
* Click here for more on this case and related cases in the Blog’s archives.