The Software IP Report

Reasonable Non-Infringement Positions Relying on Court’s Claim Construction Negates Willful Patent Infringement Argument

By Charles Bieneman

Categories: Patent Infringement, The Software IP Report

Because Fairchild Semiconductor (a counterclaim defendant) had advanced credible non-infringement positions, the court denied a summary judgment motion seeking a finding of willful infringement in Fairchild Semiconductor Corp. v. Power Integrations, Inc., No. 12-540-LPS (D. Del. April 23, 2015).

The court here followed the two part test established in In re Seagate Technology, LLC, to analyze the issue of willful infringement of U.S. Patent No. 6,229,366. To meet the first prong of this test, “the plaintiff 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.’” To meet the second prong, “the plaintiff must next establish ‘that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer.’”

The court concluded that the first Seagate prong was not satisfied because Fairchild had asserted “reasonable non-infringement positions based on the Court’s claim construction.” Because Fairchild’s arguments, the court explained, “are, at minimum, credible, reasonable non-infringement theories . . . the first prong of Seagate cannot be satisfied.” As a result, the court granted Fairchild’s motion.

As this case demonstrates, claim construction willful infringement can turn on claim construction. Moreover, assuming claim construction permits, reliance on the court’s claim constructions in advancing non-infringement positions can likewise provide some prophylactic against a finding of willful infringement.