Charting the Course Around Willful Infringement



(of a bad or harmful act) intentional; deliberate.

“willful acts of damage”

There was a time courts treated willful infringement simply as intentionally copying a patented invention. The onus was on the plaintiff to present convincing and clear evidence of an obvious infringement. Then, things changed; the alleged infringer had to build a record to show that it did not act in bad faith. In 2016, the US Supreme Court issued an opinion wherein they stated that the Patent Act provides for the enhancement of damages up to three times in case of proof of infringement.

The courts have taken that even further in favor of the patent holder. Last month, the Texas courts believed that willful infringement occurs when there is no reply to an infringement notice. Holding Having silently watched the parade pass it by, Apple cannot now complain that the parade didn’t stop on its own to entertain them,” Apple now has to comply with an order and pay damages to the tune of $308.5 million!

You can no longer ignore the infringement notice; it will be considered a case of willful infringement!

Whether Willful Infringement or Not – Notice is here. Now What?

The logical first step would be to check the following:

  • Is the notice from a genuine patent holder or a patent troll? 
  • How strong is the subject patent? 
  • Does it really infringe? 
  • What’s the existing prior art? 
  • Has it genuinely been overlooked by the innovation team?
  • Was the innovation very easily available? 
  • Did it not occur to the development team that something so easily available might be patented?

Once you figure out if there is any merit in the notice, it’s time to decide which route to take – settle this dispute or fight the good fight in the court. 

A couple of things to remember. 

  1. A settlement is almost always a good idea. Only if you see merit in the infringement notice, you have received. 
  2. Taking the court route is exceptionally resource-heavy. It will drain your enterprise of time, energy, and of course, money. It might be worth depending on what’s at stake.

After weighing all considerations, if you believe that an out-of-court settlement works better for you, there won’t be any need to respond to the notice. But first, ensure your settlement agreement is air-tight regarding court claims against you. 

You must reply to the notice if you go down the legal route through the courts.

Check Patent Strength

Wonder if there’s a quick and effective way to help you decide which route to take? A tool that enables you to gauge the strength of the patent without even employing your IP team? The business’s IP resources must only look into the matter if the subject patent appears strong.

Imagine a search tool that can access any technical information – patent and non-patent literature. Furthermore, this search tool possesses an advanced algorithm to find only relevant results. To top it all – searching for technical information on such a platform is a piece of cake. Sounds unbelievable?

We hear you; however, it’s possible to create such a tool with advanced AI capability to interpret the patent language. We’ve taken the first step towards building such a tool. We call it PQAI – Patent Quality Through Artificial Intelligence.

PQAI is a collaborative initiative that aims to leverage AI to create a tool we just described. We envision – “A universal repository of humanity’s entire technical knowledge efficiently accessible to everyone and anyone.”.

PQAI is far from perfect at the moment, but it’s definitely promising. We say that with confidence because of the results that various validation test cases we have run have given us. For example, we identified some IPR cases a few months ago and ran the subject patents through PQAI. In some of these cases, we observed that PQAI was able to find the prior art cited by the sued party to invalidate the subject patent. We’re sharing one of those cases with you right here:

Facebook VS Villmer LLC Inc

Facebook had received an infringement notice over Oculus Go from Villmer. We used PQAI to run a prior art search to see if it could have helped locate prior art. It gave us results that matched the prior art submitted to have the patent invalidated. 

The patent that was the subject matter of the litigation bore the number US9618747. The patent broadly pertains to head-mounted displays. Villmer’s infringement allegations focused on Facebook’s head-mounted virtual reality (VR) devices, the Oculus Go and the Oculus Quest. The ’747 patent was valid, enforceable, and duly issued in full compliance with US law.

A picture of Oculus Go by Facebook.

 A drawing from Villmer’s patent

We picked up claim 1 from patent number US9618747 and pasted it in the PQAI query box. Here’s a screenshot of one of the prior art that Facebook listed during IPR to have ‘747 invalidated.

Prior art snapshot from IPR document

Here’s the prior art PQAI spotted against our search for Claim 1 from ‘747. The spotted patent bears no. US2012005053A1, one of the prior arts listed by Facebook: 

Running a query through PQAI

PQAI is a search tool that is a work in progress. We would like to see it get to a stage where prior art like this ranks higher and results are even more efficient. And we are constantly working toward perfecting the system. 

Get Involved – Join the PQAI Initiative

PQAI is a collaborative initiative to build an AI-powered prior art search tool accessible to all involved. We would love all stakeholders to come forward and join the initiative. You, as a corporate, can contribute too! The question is, why would you?

With PQAI, we aim to create a more stable and transparent patent ecosystem for corporations. We believe it will make R&D investments more predictable, increase confidence in patents, and make risks and opportunities more visible. We could use all the resources to make this initiative successful. You could be part of this revolution by funding the development of the tool. In return, you will give yourself and the world a system to file better patents. 

Disclaimer – “The statements and views expressed in this post are intended for general informational purposes only and do not constitute legal advice or a legal opinion.”

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