green
Positive treatment
Hot · 49 in 5y
Issue: advice of counsel defenseNY ↗
Quoted verbatim 29×
84.0 score
G Cite
cited 34× by 26 distinct cases, 2007–2015 · 11 courts ·
…a patentee 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.
at p. 1371
⚠ not in text
Topic ↗
cited 14× by 14 distinct cases, 2008–2014 · 10 courts ·
…to establish willful infringement, a patentee 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.
at p. 1371
⚠ not in text
Topic ↗
cited 13× by 12 distinct cases, 2008–2021 · 10 courts ·
…was either known or so obvious that it should have been known to the accused infringer.
at p. 1371
⚠ not in text
Topic ↗
Treatment trajectory · 2007 → 2026 · click a year to view as-of
2007
2016
2026
Top citers, strongest first. 50 distinct citers.
How cited ↗
discussed
Cited "but see"
SPX Corp. v. Bartec USA, LLC
Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity”); but see In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed.Cir.2007) (overruling Underwater Devices to establish that “there is no affirmative obligation to obtain opinion of counsel”).
examined
Cited as authority (verbatim quote)
Global Traffic Technologies LLC v. Morgan
(3×)
also: Cited as authority (rule)
the state of mind of the accused infringer is not relevant to this objective inquiry.
examined
Cited as authority (verbatim quote)
Aqua Shield v. Interpool Pool Cover Team
(3×)
also: Cited as authority (rule)
a substantial question about invalidity or infringement is likely sufficient not only to avoid a preliminary injunction, but also a charge of willfulness based on post-filing conduct.
examined
Cited as authority (verbatim quote)
Kilopass Technology, Inc. v. Sidense Corporation
(2×)
to establish willful infringement, a patentee must show by clear and convinc- ing evidence that the infringer acted despite an objective- ly high likelihood that its actions constituted infringement of a valid patent.
examined
Cited as authority (verbatim quote)
Robert Bosch, Llc v. Pylon Manufacturing Corp.
(9×)
also: Cited as authority (rule)
a finding of willfulness does not require an award of enhanced damages; it merely permits it.
discussed
Cited as authority (verbatim quote)
Medicines Co. v. Mylan Inc.
(2×)
also: Cited "see"
asserting the advice of counsel defense waives ... attorney-client privilege for all communications on the same subject matter, as well as any documents memorializing attorney-client communications.
examined
Cited as authority (verbatim quote)
Brandywine Communications Technologies, LLC v. Casio Computer Co.
(2×)
also: Cited as authority (rule)
when a complaint is filed, a patentee must have a good faith basis for alleging willful infringement. so a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer's pre-filing conduct.
examined
Cited as authority (verbatim quote)
Brandywine Communications Technologies, LLC v. T-Mobile USA, Inc.
(2×)
also: Cited as authority (rule)
when a complaint is filed, a patentee must have a good faith basis for alleging willful infringement. so a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer's pre-filing conduct.
discussed
Cited as authority (verbatim quote)
Tarkus Imaging, Inc. v. Adobe Systems, Inc.
the state of mind of the accused infringer is not relevant to this first-prong objective inquiry.
examined
Cited as authority (verbatim quote)
Advanced Fiber Technologies (AFT) Trust v. J & L Fiber Services, Inc.
(4×)
also: Cited as authority (rule), Cited "see"
a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer's pre-filing conduct
discussed
Cited as authority (verbatim quote)
Accentra Inc. v. Staples, Inc.
(2×)
also: Cited as authority (rule)
an award of enhanced damages requires a showing of willful infringement.
examined
Cited as authority (verbatim quote)
Oracle Corp. v. Druglogic, Inc.
(2×)
also: Cited as authority (rule)
to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its action constituted infringement of a valid patent
discussed
Cited as authority (verbatim quote)
iLOR, LLC v. Google, Inc.
(2×)
also: Cited as authority (rule)
state of mind of the 1378 accused infringer is not relevant to the objective inquiry
examined
Cited as authority (verbatim quote)
Goss International Americas, Inc. v. Graphic Management Associates, Inc.
(4×)
also: Cited as authority (rule), Cited "see"
a patentee who does not attempt to stop an accused infringer's activities with a preliminary injunction should not be allowed to accrue enhanced damages based solely on the infringer's post-filing conduct.
discussed
Cited as authority (verbatim quote)
Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc.
proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness
examined
Cited as authority (verbatim quote)
Presidio Components Inc. v. American Technical Ceramics Corp.
(9×)
also: Cited as authority (rule), Cited "see", Cited "see, e.g."
accordingly, we overrule the standard set out in underwater devices and hold that proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness ____we abandon the affirmative duty of due care ....
discussed
Cited as authority (verbatim quote)
Saint-Gobain Autover USA, Inc. v. Xinyi Glass North America, Inc.
(2×)
also: Cited as authority (rule)
a finding of willfulness does not require an award of enhanced damages; it merely permits it.
examined
Cited as authority (verbatim quote)
Netscape Communications Corp. v. Valueclick, Inc.
(5×)
also: Cited as authority (rule), Cited "see"
a patentee who does not attempt to stop an accused infringer's activities by seeking a preliminary injunction should not be allowed to accrue enhanced damages based solely on the infringer's post-filing conduct.
examined
Cited as authority (verbatim quote)
Krippelz v. Ford Motor Company
(7×)
also: Cited as authority (rule)
objectively-defined risk" is "determined by the record developed in the infringement proceeding
examined
Cited as authority (verbatim quote)
Eden Isle Marina, Inc. v. United States
(5×)
also: Cited as authority (rule), Cited "see", Cited "see, e.g."
here, the same rationale generally limiting waiver of the attorney-client privilege with trial counsel applies with even greater force to so limiting work product waiver because of the nature of the work product doctrine.
discussed
Cited as authority (verbatim quote)
ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.
whether a willfulness claim based on conduct occurring solely after litigation began is sustainable will depend on the facts of each case.
examined
Cited as authority (quoted)
Trydel Research Pty. Ltd. v. ITW Global Tire Repair Inc.
work product protection remains available to 'nontangible' work product ... otherwise, attorneys' files would be protected from discovery, but attorneys themselves would have no work product objection to depositions.
examined
Cited as authority (quoted)
LiTL LLC v. Dell Technologies Inc.
if this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk of infringement . . . was either known or so obvious that it should have been known to the accused infringer.
discussed
Cited as authority (quoted)
Jiaxing Super Lighting Electric Appliance, Co., Ltd. v. CH Lighting Technology Co., Ltd.
we hold that prejudgment interest can only be applied to the primary or actual damage portion and not to the punitive or enhanced portion.
examined
Cited as authority (quoted)
Mitek Systems, Inc. v. United Services Automobile Association
holding, as a general proposition, that asserting the advice of counsel defense 19 and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege 20 for communications with trial counsel
examined
Cited as authority (quoted)
Mitek Systems, Inc. v. United Services Automobile Association
holding, as a general proposition, that asserting the advice of counsel defense 19 and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege 20 for communications with trial counsel
examined
Cited as authority (quoted)
Walker v. White
work product protection remains available to 'nontangible' work product...otherwise, attorneys' files would be protected from discovery, but attorneys themselves would have no work product objection to depositions.
examined
Cited as authority (quoted)
01 Communique Laboratory, Inc. v. Citrix Systems, Inc.
(2×)
also: Cited as authority (rule)
a patentee 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____the state of mind of the accused infringer is not relevant to this objection inquiry.
examined
Cited as authority (quoted)
Potter Voice Technologies, LLC v. Apple Inc.
(4×)
also: Cited as authority (rule)
a patentee who does not attempt to stop an accused infringer's activities in this manner should not be allowed to accrue enhanced damages based solely on the infringer's post-filing conduct.
discussed
Cited as authority (quoted)
SEB SA v. Montgomery Ward & Co., Inc.
(2×)
also: Cited as authority (rule)
enhanced damages opinion
cited
Cited as authority (rule)
Terry L. Hamilton v. Denis McDonough
Such information is given "nearly absolute[ ] protection." In re Seagate, 497 F.3d at 1375.
discussed
Cited as authority (rule)
Dynatemp International, Inc. v. RMS of Georgia, LLC
(2×)
also: Cited "see"
Seagate, 497 F.3d at 1369.
cited
Cited as authority (rule)
Touchstream Technologies, Inc. v. Altice USA, Inc.
No. 65 at 10-11.)) Neither Mentor Graphics nor In re Seagate Technology, LLC, 497 F.3d 1360, 1374 (Fed.
cited
Cited as authority (rule)
Nitride Semiconductors Co., Ltd. v. Lite-On Technology Corporation
Cir. 1996); In re Seagate Technology, LLC, 497 F.3d 1360, 1368 (Fed.
cited
Cited as authority (rule)
Christ Center of Divine Philosophy, Inc. v. Elam
Id; Island Software and Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257 , 263 (2nd Cir. 2005); In re Seagate Technology, LLC, 497 F.3d 1360, 1370 (Fed.
cited
Cited as authority (rule)
Probatter Sports, LLC v. Sports Tutor, Inc
To support this position, Sports Tutor cites to In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed.
cited
Cited as authority (rule)
Boston Scientific Corp. v. Nevro Corp.
Cf Jn re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed.
cited
Cited as authority (rule)
Summit Industrial Supply, LLC v. Triple Crown Consulting, LLC
(Doc. 8 at 16 (citing In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed.
examined
Cited as authority (rule)
Steuben Foods, Inc. v. Shibuya Hoppmann Corporation and HP Hood LLC
(3×)
Seagate, 497 F.3d at 1373.9 8.
cited
Cited as authority (rule)
Plate, LLC v. Elite Tactical Systems, LLC
Lastly, Defendants are not “disclosing favorable communications while asserting the privilege as to less favorable ones.” In re Seagate Technology, LLC, 497 F.3d 1360, 1372 (Fed.
discussed
Cited as authority (rule)
Michigan Motor Technologies LLC v. Volkswagen Aktiengesellschaft
Cir. 2007), established a two-part test for determining whether willful infringement of a patent had occurred: first, “a patentee 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”; and second, “the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer.” Id. at 1371.
cited
Cited as authority (rule)
COCHLEAR LTD. v. OTICON MEDICAL AB
Cir. 2010) (internal citations omitted) (citing In re Seagate Technology, LLC, 497 F.3d 1360,1371 (Fed.
cited
Cited as authority (rule)
Cascades AV LLC v. Evertz Microsystems, Ltd.
In Halo, the Supreme Court abrogated the two-part test established in In re Seagate Technology, LLC, 497 F.3d 1360, 1374 (Fed.
discussed
Cited as authority (rule)
Kansas City Power & Light Co. v. United States
(2×)
This rule “is grounded in principles of fairness,” In re Seagate Tech., 497 F.3d at 1372, which helps explain why the contours of a subject matter waiver depend on the circumstances giving rise to the original waiver, see Oasis Int’l Waters, 110 Fed.
discussed
Cited as authority (rule)
Texas Advanced Optoelectronic v. Renesas Electronics America
C The parties do not dispute that, if the jury verdict finding liability for patent infringement survives, the TEXAS ADVANCED OPTOELECTRONIC v. RENESAS 49 ELECTRONICS AMERICA district court’s ruling denying enhanced damages under the standard set forth in In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed.
examined
Cited as authority (rule)
Apple Inc. v. Samsung Electronics Co.
(3×)
also: Cited "see"
Sea-gate, 497 F.3d at 1371.
cited
Cited as authority (rule)
Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co.
Second, the patentee had to show the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.” In re Seagate, 497 F.3d at 1371.
discussed
Cited as authority (rule)
R-BOC Representatives, Inc. v. Minemyer
(2×)
Seagate set out a two-part test for proving willfulness where the patentee must show that: (1) “the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent,” and (2) the “objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.” Id. at 1371 (parenthesis in original).
examined
Cited as authority (rule)
Sociedad Espanola de Electromedicina y Calidad, S.A. v. Blue Ridge X-Ray Co.
(4×)
also: Cited "see"
Under Seagate, a plaintiff seeking enhanced damages was first required to demonstrate “by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Id. at 1371.
Retrieving the full opinion text from the archive…
In Re Seagate Technology, LLC
2006-M830.
Court of Appeals for the Federal Circuit.
Aug 24, 2007.
497 F.3d 1360
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
ERRATA
August 24, 2007
Appeal No. 06-M830
IN RE SEAGATE TECHNOLOGY, LLC
Precedential Opinion
Decided: August 20, 2007
In the opinion for the court, the following changes have been made:
On page 8, lines 15-16, "Quantum Corp. v. Plus Development Corp., 940 F.2d 642, 643 (Fed. Cir. 1991)" has been replaced with "Quantum Corp. v. Tandon Corp., 940 F.2d 642, 643 (Fed. Cir. 1991)".
On page 21, line 9, “patentee” has been changed to “party”.