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krisi
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wilful
krisi   3/5/2014 2:18:02 PM
NO RATINGS
how do you determine whether the infrigement is wilful?

lakehermit
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Re: wilful
lakehermit   3/6/2014 12:12:16 PM
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I'm not an attorney but as I understand the idea of willful infringement it is that the infringer had notice (knew of the existance) of the patents, were aware that the patents covered their product and kept on infringing after that notice.

A similar sort of legal action can take place where a person who knew or should have known that something they were doing was dangerous (like driving without brakes) and then injure somebody because of their negligence. Not only will they have to pay damages for the loss that they cause, they will also have to pay an extra amount (or possibly even go to jail) as a punishment for the negligence.  

The Judge in this case may award up to three times the amount of damages as a sort of punishment for knowingly infringing. The judge does not have to award anything however, and it is up to the judge's discretion. There is a good and recent paper on willfulness, although written with a lot of legal jargon, at http://www.lexology.com/library/detail.aspx?g=afac3f58-f817-4b00-a32e-04a93708bd33 

The bottom line here is that if you manage a company and receive a notice of infringement from a patent owner you should take it seriously and let the company legal people deal with it. Many company managers/owners just throw those notice letters in the trash but it will likely come back to haunt them.

krisi
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CEO
Re: wilful
krisi   3/6/2014 12:21:22 PM
NO RATINGS
thank you @lakehermit...makes sense...I am just curious how do you prove that willfullness in court...I have several patents in my name but after I wrote them the lawyers modified my writing so much that I can barely understand what they cover ;-)

lakehermit
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Re: wilful
lakehermit   3/6/2014 12:44:14 PM
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It is not uncommon for the patent lawyers to rewrite an inventor's description of his/her invention, mainly because patents are so interwoven with our legal system. The claims of the patent, which define the inventor's right to exclude, are essentially legal statements, sort of like minature laws which tell everyone what is protected. I personally think that a patent should be written so that a jury of your peers can understand them but it is rare that a patent attorney will agree with me.

In any event, to answer your question, notice of infringement is a legal matter and like most legal matters there are a lot of court cases which must be looked at in order to understand what does and does not constitute notice. When patent lawers give notice of infringement to an alleged infringer it is usually a quite detailed document which describes (in a legal sense) where each and every element of at least one claim of the patent is found in the accused device.

For a very simple example if your patent claim 1 says "I claim an electronic circuit device having circuits A, and B and C" (A and B and C being circuits described in the patent) then the infingement notice will read something like "claim 1 element A is found on the circuit board of (the accused infringer's) product as implemented by IC U5, element B is found as implemented by IC U6 and element C is found as implemented by IC U7." Then when you get to the infringement trial your attorneys will argue to the jury that that letter (which by the time these things get to trial will likely have been sent years ago) was a sufficient notice to the accused infringer and the jury should find the infringer guilty of willful infringement. If they do then the judge can award up to treble damages.

Of course this is a gross oversimplification and you would have to sit through a few weeks of a patent infringement trial to actually get an understanding of how these trial arguments work. Most infringement trials involve several lawyers and each side will usually spend millions of dollars in legal fees.

krisi
User Rank
CEO
Re: wilful
krisi   3/6/2014 12:51:05 PM
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thank you @lakehermit for a detailed explanation!...as you say long and complex process of proving willfullnes...but 3x$315M is a high enough incentive!

C VanDorne
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CEO
Re: wilful
C VanDorne   3/6/2014 1:27:50 PM
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That's an excellent question but it probably was more appropriate to ask after the first offense.  After four of them there is a pattern which would establish malice, no?  That is unless four patents were accidently copied at one time and then the prducts on which they were based were not realeased all at once but instead released sequntially over a period of time.

That sounds like quite a stretch.

My other thought on your question is that maybe intention doesn't matter.  There was IP used by Fairchild that was not theirs FIRST, and thus using it should cost them.

Lawyers?

happycamper
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Re: wilful
happycamper   3/6/2014 1:42:08 PM
NO RATINGS
Hi lakehermit,

Your outline about willfulness is on-track but I want to emphasize that one really needs to do a thorough patent search or else you will be deemed to have willfully infringed.  In other words, saying "I didn't know it was patented" is pretty much saying "Willfully guilty".  It makes sense that it works that way because otherwise no one would ever do patent searches for fear of triggering triple damages.

Typically the best protection against a future patent lawsuit is to do a thorough search and to then document why each seemingly related patent is not actually infringed upon or was 'obvious' or had pre-existing art and wasn't valid in the first place.  This is not easy since patents are purposely written to be legalese, vague and open ended.

A quick way to fix this would be for a patent court to just declare confusing, vague and open ended patents to be invalid.  The guideline could be "inteligible to a panel of grad students." This would then pretty quickly cause patents to become clear and concise.  I'm not holding my breath.

The current situation is just awful.  It is sad when lawyers and judges will decide, after the fact, something about which they know little about and have purposely made as messy and complex as possible and it is sad when engineers have to spend significant percentages of their time reading and digesting non-sensical patents claims.

lakehermit
User Rank
Rookie
Re: wilful
lakehermit   3/6/2014 2:40:02 PM
NO RATINGS
Your observations are quite correct. In my view there needs to be a seperate patent court system. We have seperate courts for bankruptcy, taxes, family law, small claims etc. which are all complex legal matters. Why not a seperate patent court system where the judges actually have some technical skills. Who would think a judge with an economics background would be able to come up with a correct decision on some highly technical electronics patent. The real shame is though that there are a lot of law firms that need to pay the rent on those high rise offices so they are going to defend their client to their (the client's) last dollar.

krisi
User Rank
CEO
Re: wilful
krisi   3/6/2014 2:52:32 PM
NO RATINGS
I am pretty sure none of my grad students will understand what is covered by my patents...I barely do...that is a sad reality

Webby81
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Rookie
Re: wilful
Webby81   3/6/2014 7:51:08 PM
NO RATINGS
This is not exactly correct, its only Wilful if you know about the patent. Its impossible when designing a new product to search every patent and see if you infringe. In fact if you do search and find a relevant patent you are obliged to work around it or it would be wilful infringment. Its recommended that engineers don't do patent searches for this reason, leave this up to the lawyers.

In this case it looks like Fairchild were served notice in 2004 that they infringed.

Wilful infringment is determined by discovery of emails, notes, and documents etc.

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