Earlier this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued its decision in In re Seagate Technology, LLC. The decision has been well-covered by the legal press and with good reason. As one commentator stated, Seagate represents a “seismic” shift in the law on the issue of willful patent infringement. Indeed, Seagate appears to have the potential to significantly re-balance the economics of patent infringement cases here in the U.S.
Prior to Seagate, courts relied on a negligence-based standard articulated in the Underwater Devices Inc. v. Morrison-Knudsen Co. case to determine whether patent infringement was willful. Under this standard, one having “actual notice of another’s patent rights” had “an affirmative duty to exercise due care to determine whether or not it is infringing.” Seagate expressly overturns this standard and holds that proof of willful infringement instead requires a higher showing of “objective recklessness.” In doing so, Seagate raises the bar for a finding of willful infringement to a level substantially higher than that of mere negligence, thus making it more difficult for a patent holder to prove a claim for willful infringement.
Under U.S. patent law a finding of willful (and not merely innocent) infringement allows a claim for treble (3x) damages to be made against the alleged infringer. By raising the bar for a finding of willfulness, Seagate appears to significantly narrow the range of situations in which a patent holder can now credibly threaten (much less expect to win) a claim for increased damages based on willful infringement. This likely means more situations in which patent holders will be able to (at best) expect to obtain only actual damages if they bring a case to enforce their patent(s) against an alleged infringer. Considering that according to a 2004 report titled “Empirical Statistics on Willful Patent Infringement” by now CAFC judge Kimberly Moore, over 90% of patent cases involve allegations of willful infringement and claims for treble damages, it seems reasonable to assume that this change will figure significantly into the economics behind the decision to bring many future patent cases.
While much is made about the high costs of defending a patent case, the upfront “investment” necessary to bring a patent case is not insignificant. Seagate in essence lowers the potential return on that investment by making it more difficult to obtain treble damages. Particularly when viewed in light of other recent patent decisions such as eBay Inc v. MercExchange, L.L.C. (which denies a patent holder the ability to automatically obtain an injunction in the case of a finding of patent infringement – injunctions and damages being the primary remedies available in patent cases) and KSR v. Teleflex (which has been widely viewed as making it easier for infringement allegations to be challenged on the grounds that the patented invention at issue is too obvious to deserve patent protection), Seagate would appear to have the potential to motivate patent holders to reconsider bringing costly patent infringement cases and instead encourage them to negotiate less costly settlements or licensing arrangements (or perhaps take no action at all). After all, why would a reasonable (and value-maximizing) patent holder bring a patent case if the potential return does not justify the overall investment necessary to reach that return?
Whether this actually proves to be the legacy of Seagate remains to be seen. And, it will be very interesting to watch the extent to which Seagate and these other recent cases have an actual impact on the willingness of patent holders to threaten and bring patent cases in this country. Regardless, I would expect that foes of the continued rise in power of patents and patent holders and those who have ranted about the need for patent reform are likely to welcome Seagate as yet another step in the weakening of that power and toward the further reform of patent laws here in the U.S.