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Product’s assembly instructions lead to finding of inducing infringementFebruary 15, 2006

Lack of proper documentation hinders caseIn a recent decision, the Federal Circuit explored the requirements for inducement of infringement and further elaborated on the Court’s holding in Knorr-Bremse regarding the use of competent opinions of counsel (or lack thereof) in the determination of willful infringement. In Golden Blount, Inc. v. Robert H. Peterson Co., the patented technology involved fireplace burners and associated equipment. Specifically, the issue was the vertical placement of the primary and secondary burner tubes in relation to each other. The district court found that the defendant, Robert H. Peterson Company, was liable for infringement, inducing infringement, and contributory infringement, and that the infringement was willful. Based on its finding of willfulness, the court awarded the plaintiff treble (triple) damages and found the case to be exceptional, awarding attorney fees to the plaintiff.Inducing infringement occurs when a party does not infringe a patent itself, but through its actions induces others to infringe a patent. In this case, the defendant sold only secondary burners for fireplaces. These sales did not directly infringe the patent, as the patent required the full fireplace assembly, including both primary and secondary burners. However, the defendant packaged assembly instructions with its sales of secondary burners. These instructions, if followed by the installer, would result in the final assembly infringing the patent. The Federal Circuit held that because there was evidence that these instructions were packaged with each secondary burner sold by the defendant and there was no evidence that customers installed the secondary burners in a manner other than contained in the instructions, the defendant was liable for inducing infringement.The fact that the burner could be installed in a noninfringing manner was irrelevant in the absence of evidence that any burners were actually installed in a noninfringing manner. This holding is essentially a corollary to other Federal Circuit case law holding that if a product does not infringe in its normal configuration, the fact that it may be altered into an infringing condition under unusual circumstances does not make the product infringing. Here, the product infringed in its normal configuration, and the fact that it could be altered into a noninfringing condition under unusual circumstances did not make the product noninfringing.The court also addressed the issue of willful infringement. The plaintiff notified the defendant in December, 1999, stating that they believed the defendant’s product was infringing on their patent. The defendant told its counsel that ‘the whole industry’ had been making products like those claimed ‘for 20 years or more.’ In response, the lawyer gave an oral opinion stating that if that was true, the patent would likely be invalid. However, at this time, the attorney did not possess an allegedly infringing device, the prosecution history of the patent, or any prior art device that the defendant stated had been in prior use. After the lawsuit was filed, the defendant sought out a second opinion specifically to avoid a finding of willfulness and a potential award of attorney fees. Two additional oral opinions were rendered by the same attorney, but one opinion was still rendered without looking at the prosecution history and accused device, and the second was rendered without having looked at the accused device.The district court found these opinions of counsel not to be competent, and unable to shield Peterson from a finding of willfulness. At the Federal Circuit, Peterson challenged this as violating the Federal Circuit’s precedent in Knorr-Bremse, which held that when an infringer obtains an opinion of counsel but does not produce it, claiming attorney-client privilege, it cannot be inferred that the opinion was negative. The court rejected this argument. When an opinion (or opinions) are produced, as they were in this case, the patent holder ‘is free to introduce as evidence whatever opinions were obtained and to challenge the competence of those opinions’ in order to meet its burden of proof that the infringement was willful. In this case, the evidence showed that the opinions rendered by Peterson’s counsel were not competent, as most did not address the prosecution history of the asserted patent, the accused device was never examined, and only one opinion was obtained prior to suit being filed. As a result, the district court’s finding of willfulness and its award of attorney fees to the plaintiff was affirmed.This case shows that parties must ensure that when seeking an opinion of counsel regarding infringement or validity of a patent that the attorney providing the opinion have access to all relevant documentation, including the accused product, and any other relevant information that can be provided. If this information is not provided and considered, the opinion of counsel will likely be found not to be competent, and provide little or nor defense to a charge of willful infringement if the case is litigated.For the complete decision, visit

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