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Court Concludes That Pre-Suit Notice for Willfulness Can Occur Even if Notice Was Provided by Third-Party and Not Patent Owner

Arigna filed a patent infringement action against various vehicle manufacturers that alleged infringement of U.S. Patent No. 7,397,318 (“‘318 Patent”). The ‘318 Patent is direct toward a voltage control oscillator for use in a microchip incorporated in radar modules provided by vehicle parts manufacturer Continental.

After Toyota notified Continental of the lawsuit, Continental filed a declaratory judgment action and Arigna amended its complaint to include Continental as a defendant. The defendants subsequently filed a summary judgment motion with respect to the claim for willful infringement.

In analyzing the motion for summary judgment, the district court explained that “Enhanced damages under § 284 are predicated on a finding of willful infringement.” SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1310 (Fed. Cir. 2019) (“SRI II”). Willful infringement is a question of fact merely requiring a finding of deliberate or intentional infringement. SRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1330 (Fed. Cir. 2021), cert. denied, 142 S. Ct. 2732 (2022) (“SRI IV”) (citing Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020)); WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016) (“We do not interpret Halo [Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923] as changing the established law that the factual components of the willfulness question should be resolved by the jury.”).

The district court also explained that “[w]illful infringement impliedly requires knowledge of the patent in suit. WBIP, 829 F.3d at 1341 (Fed. Cir. 2016) (citing Halo, 136 S.Ct. at 1932-33). Further, evidence of knowledge of the patents in suit and intent sufficient to establish deliberate or intentional conduct may be inferred from circumstantial evidence. See Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016) (“knowledge of infringement can be inferred from circumstantial evidence”); WCM Industries, Inc. v. IPS Corporation, 721 Fed.Appx. 959, 970 (Fed. Cir. 2018) (“whether an act is ‘willful’ is by definition a question of the actor’s intent, the answer to which must be inferred from all the circumstances.”) (emphasis original) (cleaned up) (quoting Gustafson, Inc. v. Intersystems Industrial Products, Inc., 897 F.2d 508 (Fed. Cir. 1990)). However, “[k]nowledge of the asserted patent and evidence of infringement is necessary, but not sufficient, for a finding of willfulness. Rather, willfulness requires deliberate or intentional infringement.” Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 988 (Fed. Cir. 2021) (citing Eko Brands, 946 F.3d at 1378).”

In the summary judgment motion, the defendants argued that Arigna lacked evidence of pre-suit knowledge as to all defendants. Arigna provided no response to vehicle defendants’ motion and the court found that “[a]ccordingly, there is no genuine dispute of material fact as to Nissan’s, Tesla’s, Toyota’s, and GM’s pre-suit knowledge, and summary judgment in their favor as to pre-suit willful infringement is appropriate.With respect to Continental, however, Toyota’s notice established pre-suit knowledge. The court acknowledged Continental’s argument that the notice provided by Toyota was a direct result of the instant suit, but nonetheless noted that Continental was not included as a defendant until after Toyota’s notice, and Continental provides no case law to support its argument that pre-suit knowledge requires notice by the patentee.

Accordingly, the court denied the summary judgment motion with respect to Continental.


Arigna Technology Limited v. Nissan Motor Co. LTD., Case No. 2:22-cv-00126-JRG-RSP (E.D. Tex. Oct. 5, 2022)


The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or