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Abstract

The Federal Circuit’s recent sua sponte grant of rehearing en banc in Knorr-Bremse v. Dana Corporation has catalyzed a vocal debate concerning the nature and consequences of willful patent infringement. Subject to virtually unanimous condemnation is the Federal Circuit’s “adverse inference” rule, which forces a party accused of willful infringement to choose between two unpalatable options: (i) disclosing privileged advice of counsel to mount a willfulness defense, or (ii) not disclosing such information and being subjected to an adverse inference that an exculpatory opinion was not or could not be obtained. This commentary concurs that the adverse inference rule should be abandoned, for its provenance is far from clear and the harm it works to attorney-client privilege is substantial. More broadly, this commentary questions whether the notion of willful infringement remains defensible in a patent system marked by significant uncertainties as to the boundaries of literal claim scope and the doctrine of equivalents. At a minimum, the question of willfulness should no longer be given to juries. The analyses of willfulness and damages enhancement are inextricably bound together and both should be decided by the courts. Practical benefits and policy considerations support this proposal and Seventh Amendment concerns do not preclude it.

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