Subject: Willful Infringement

From: "Contreras, Jorge" <[email-masked]>
Date: Tue, 18 Feb 2003 20:27:22 -0500

>	It has been suggested by some that simply knowing that a patent
>exists can increase an individual's liability (treble damages?). Thus,
>would any public "thinking" or soliciting of IPR claims cause WG
>participants to be compromised? Can one of the lawyers in the group
>respond to this? (Jorge?)

In the U.S., treble damages for patent infringement (and attorneys' fees) can be awarded when infringement is "willful".  The standards for finding willful infringement are not codified in the Patent Act, but have been established through case law.  The analysis requires a consideration of the "totality of the circumstances."  Infringement can be held to be willful if the infringement was committed intentionally and with knowledge of the infringed patent.  Typically, this knowledge is deemed to exist after the patent owner notifies the infringer of the patent with some specificity regarding the nature of the infringement.  An alleged infringer can raise as an affirmative defense a good faith belief that the asserted patent is invalid or not infringed.  This belief is strongest if supported by an opinion of counsel.

How does this relate to IETF?  Arguably, if a patent owner notifies IETF of a patent covering a standard and someone who knows of the disclosure then implements that standard in a product that infringe the patent, the implementer is potentially subject to a claim of willful infringement.  "Thinking about" a patent would be evidence that an implementer knew of the patent, and if he/she went ahead in light of the patent, the willful infringement claim is possible.  That is the case today and has been the case for most standards-based products for a long time.  Asking patent owners to disclose patents always presents the risk that the people who find out about the patents can be sued for willful infringement.  

However, if a patent owner is interested in enforcing its patents, it would probably notify infringing implementers pretty quickly anyway, whether or not they participated in the standards process or "thought" about the patents in advance.  Remember, the infringement itself does not occur until an implementation is made (the standard does not infringe).  Thus, I'm not sure that there is a significantly increased risk of a willful infringement claim arising from required patent disclosures during the standards process.  (For example, If Company X releases a product on Jan. 1 after having discussed the existence of Company Y's patents at the IETF, then X is potentially subject to a willful infringement claim starting on Jan. 1.  If Company X didn't participate in IETF and had no idea that the patent existed, it's still likely that Company Y would notify X of the patent on, say Jan. 2, after which X would be subject to the willful infringement claim.  I'm assuming efficient inf!
ormation flow here, but that's a reasonable assumption, I think, given the industry.)

  Other views are welcome.

Jorge

-----Original Message-----
From: Bob Wyman [mailto:[email-masked]]
Sent: Tuesday, February 18, 2003 7:37 PM
To: 'Scott W Brim'; [email-masked]
Cc: Contreras, Jorge
Subject: RE: draft-ietf-ipr-wg-guidelines-01.txt submitted

draft-ietf-ipr-wg-guidelines-01.txt states:
> A working group as a whole needs to think about IPR issues:
	Could we have some discussion of what it means to "think about"
these issues and what the mechanisms are for the working group to
"solicit disclosure of IPR claims"?

	It has been suggested by some that simply knowing that a patent
exists can increase an individual's liability (treble damages?). Thus,
would any public "thinking" or soliciting of IPR claims cause WG
participants to be compromised? Can one of the lawyers in the group
respond to this? (Jorge?)
	Does "thinking about" the problem include having members of the
group notify the group when they have concerns? (i.e. if I know of a
patent and "think" it impacts a group, can I tell anyone if it is not my
patent?)
	Is there a need for forums, distinct from the technical forums,
where one can discuss IPR issues without causing every technical group
to devolve in a contest between wannabe lawyers and soap-box for
anti-patent partisans? (perhaps as an example: SIMPLE-IPR for IPR
discussions to compliment the SIMPLE list?)
	If "thinking about" IPR is a thing to be done "when examining a
technology, and deciding whether to initiate work on it" is this
something that applies to the entire WG or does it apply to WG
participants who may be considering whether some new effort should be
suggested? (i.e. If I am "thinking about" suggesting that some WG
consider some feature but then decide that I can't suggest it due to IPR
issues, can I give the negative suggestion that "We should not think
about this since XXX has a patent on it."?)

		bob wyman

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