The opinion of the court was delivered by: Judge James B. Zagel
MEMORANDUM OPINION AND ORDER
The issue of willful infringement is, by agreement, to be tried before me in one or two phases. First, I must find whether there is willful infringement. Second, if and only if, I find willful infringement, I must go on to consider what damages should be awarded to Plaintiff. My decision as to liability for willful infringement follows.
II. FINDINGS OF FACT AND OBSERVATIONS UPON THE FACTS*fn1
What I must decide here is whether Ford Motor Company's infringement of the patent of Jacob Krippelz, Sr. was willful. The current law of willful infringement is found in the en banc case of In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (overruling precedent that established a principle of willful conduct which was closely akin to a negligence rule, since it imposed upon an infringer a duty of due care to avoid infringement, and defining a new standard):
[T]o 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. The state of mind of the accused infringer is not relevant to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate that this 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. 497 F.3d at 1371 (citation omitted). The Federal Circuit left it to future cases to develop the ways in which the standard should be applied. Some opinions refer to the question to be determined after the objective risk threshold is crossed as the subjective aspect of the test. I tend to think of it as the state of mind issue since, in law, state of mind includes both actual states of mind (knowing) and inferred states of mind (should have known means known). Under the Seagate standard, both "knowing" and "should have known" are legally culpable states of mind.
Claims of willful infringement are governed by time and circumstance at each stage of the defendant's infringement. The first stage customarily begins when the inventor sends the alleged infringer some form of notice of his, her or its invention, either as part of a cease-and-desist demand or an offer to sell one or all of the owner's patent rights. The second stage usually begins at a point soon after the lawsuit is filed. Other stages may commence after a decision on re-examination, particular rulings by the court or the return of a verdict of infringement. In this case, I use the stages suggested by Plaintiff; they seem reasonable as dividing lines in this case.
Period 1 includes the time before the suit was filed in April 1998 and ends in late March 1999 when parties secured an agreed order concerning discovery, and a reexamination of the patent was sought. The significant facts I find with respect to this period (and all following periods) are these:
1. Krippelz sent a copy of his '903 patent to Ford soon after it issued in 1991.*fn2
2. Ford truthfully told Krippelz, at one time, that it was not interested in the invention.*fn3
3. Ford's puddle lamp supplier, Donnelly, had possession of the '903 patent in mid-1993 before it sold a puddle lamp mirror housing to Ford years later.
4. The Donnelly '659 patent, which Ford had and examined, refers to the Krippelz patent.
5. Ford did not (a) investigate the '903 patent to determine possible infringement or invalidity during this period or (b) possess the '903 prosecution history prior to this litigation.
6. During this period Ford possessed no potentially invalidating prior art that it ever asserted here.
7. Ford's specification (and one supplier's drawings) depicted light illuminating an area on the ground next to the vehicle, rather than illuminating the vehicle's door.
8. Donnelly designed and made Ford's first lamp.
Period 2 begins in March 1999 when Ford disclosed an invalidity defense based on the Kim patent and five other references, and ends when the '903 patent was confirmed by the Board of Patent Appeals in February 2002.
The facts I find with respect to this period (and, where relevant, all following periods) are these:
1. Ford offered, in this litigation, challenges to validity which were rejected by the Board of Patent Appeals ...