Timing and Type of Validity/Non-Infringement Opinion Can Be Relevant
The weight a court will give an opinion of counsel as a defense against enhanced damages may be affected by when the analysis for the opinion was conducted. See, e.g., Omega Patents, LLC v. Calamp Corp., 6-13-cv-01950 (M.D. Fla. Apr. 5, 2017). In Omega Patents, the trial court found reason to levy enhanced damages because there was no indication in the record that an invalidity opinion was provided to the defendant before the accused products went into production. There apparently was no evidence of record that the defendant had knowledge of the specific invalidity defense asserted during trial at the time of the actual conduct challenged.
Furthermore, in another district court decision out of Florida, enhanced Halo damages against a defendant were awarded to the patent owner even though the defendant had obtained an invalidity opinion from an employee patent agent. Arctic Cat, Inc. v. Bombardier Recreational Products, Inc., 2016 WL 4249951, *6 (S.D. Fla., July 27, 2016). The employee “acknowledg[ed] that, by law, a [patent] agent is not permitted to give an opinion on patent infringement or validity.” Moreover, the Arctic Cat trial court found the enhanced damages because the agent’s opinion “consisted of one conclusory sentence on a page of handwritten notes.” There was also evidence set forth that the defendant knew about the subject patents before they issued since the patent agent apparently made a note in his file to reexamine the patent after its issuance.
While these are just two post-Halo decisions by district courts, it seems prudent to be aware that an objectionably reasonable trial defense may not be sufficient to escape enhanced damages.
For more information about the U.S. Supreme Court’s holding in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. __ (2016), see our earlier post here.
