Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp. (Fed. Cir.)

February 6, 2004 on 9:42 am | In Caselaw |

Hal Wegner at Foley & Lardner gave me some insight on yesterday’s (Feb. 5, 2004) Federal Circuit oral argument in the case of Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 344 F.3d 1336 (order granting en banc hearing), concerning the dictum in Underwater Devices v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983). He indicated a decision is expected before the end of 2004.

The Knorr-Bremse case deals with an affirmative duty of an accused infringer to have a formal opinion from counsel to avoid a charge of willfulness. He indicated that these issues may be decided by the Federal Circuit in said forthcoming decision:

(a) Whether an adverse inference of willful infringement shall be drawn where an accused infringer refuses to disclose his opinion under an attorney-client or work product privilege;
(b) Whether the absence or existence of a formal opinion of noninfringement will – at a maximum – become just one of a “shopping list” of factors to be considered by in determining willfulness under a totality of the circumstances test patterned after Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992) abrogated on other grounds by Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc); and
(c) Whether the existence of a substantial defense to infringement should be sufficient to defeat liability for willful infringement even if no legal advice has been secured.

He felt the court may possibly also decide:

Should a test of “frivolity vel non” be applied, i.e., should an accused infringer be safeguarded from a finding of willfulness unless there is a frivolous defense to the infringement charge?
Should willfulness be determined by a judge, and not a jury?
Under a “totality of the circumstances” test, should there also be an obligation of “due care” to avoid infringement?

WOW. We’ll wait with bated breath for that decision to come down… Thanks for the insight Hal!

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