Counsel's Incompetent Non-Infringement Opinion Can Be Evidence of Willful Infringement

Case: Golden Blount, Inc. v. Robert H. Peterson Co., No. 04-1609, 05-1141, 05-1202 (Fed Cir. 2/15/06)

The One Sentence Summary: The Federal Circuit panel affirmed the district court’s finding of willful infringement and attorneys’ fees, holding that the Knorr-Bremse decision did not preclude the district court from finding that non-infringement opinions of counsel were incompetent and were evidence of willful infringement.

What They Were Fighting About: After a remand from a prior Federal Circuit decision, the district court initially ruled that there was no infringement of plaintiff’s patent for fireplace burners. The district court then reconsidered its decision, and held that defendant had willfully infringed the patent.

Federal Circuit Holdings:

• The district court had the ability to reconsider its initial ruling of non-infringement, and issue new findings under Fed. R. Civ. Proc. 52.


• The district court did not err in finding that defendant directly and contributorily infringed claims for raised primary burners by assembling burners itself and by providing instructions to customers that instructed how to assemble the burners into an infringing configuration.


• Defendant failed in proving that its product had a substantial non-infringing use that would have avoided a finding of contributory infringement.


• Defendant’s defense that it did not intend to induce infringement because it had opinions of counsel opining non-infringement was unavailing. The only intent that was necessary was to intend to cause acts that constitute infringement, and this was met by the provision of the instructions to customers.


• The district court did not err in finding willfulness based in part upon defendant’s reliance upon three oral opinions of counsel which were rendered based upon incomplete information. The first opinion was rendered without review of the prosecution history and without review of the accused product.


• There continues to be an affirmative duty to avoid infringement of the known patent rights of others.


• After Knorr-Bremse, the failure to produced an opinion of counsel does not allow an inference of willfulness. However, once privilege is waived, the patentee can challenge the competence of the opinion as evidence of willfulness.


• The district court properly found that sales of the defendants’ products would have been made by patentee but for the infringement. Damages were properly based upon sale of the entire package assembly usually sold together.


• Units that were returned by customers and never assembled into an infringing configuration should not have been part of the damages calculation.


• The panel affirmed the award of attorneys’ fees against defendant.