**United States Court of Appeals for the Federal Circuit**

01-1357, -1376, 02-1221, -1256

KNORR-BREMSE SYSTEME FUER NUTZFAHRZEUGE GMBH,

> Plaintiff-Cross Appellant,

v\.

DANA CORPORATION,

Defendant-Appellant,

and

HALDEX BRAKE PRODUCTS CORPORATION,

and HALDEX BRAKE PRODUCTS AB,

Defendants-Appellants.

[Jeffrey D. Sanok]{.underline}, Crowell & Moring L.L.P., of Washington,
DC, argued for plaintiff-cross appellant. With him on the brief were
[Michael I. Coe]{.underline}, [Herbert I. Cantor]{.underline} and [Karen
Canaan]{.underline}. Of counsel were [John C. Lenahan]{.underline},
[Edward R. Murray]{.underline} and [Clifton Elgarten]{.underline}.

[Ellen A. Efros]{.underline}, Rader, Fishman & Grauer, PLLC, of
Washington, DC, for defendant-appellant Dana Corporation, joined in the
brief of Haldex Brake Products AB, et al.

Stanley H. [Lieberstein]{.underline}, St. Onge Steward Johnston & Reens,
LLC, of Stamford, Connecticut, argued for defendants-appellants Haldex
Brake Products AB and Haldex Brake Products Corporation; and
defendant-appellant Dana Corporation. With him on the brief for Haldex
were [Wesley W. Whitmyer, Jr.]{.underline} and [Richard J.
Basile]{.underline}. Of counsel were [James P. Jeffry]{.underline},
[Michael G. Gabriel]{.underline}, and [David W. Aldrich]{.underline}.

[Ralph P. Albrecht]{.underline}, Venable LLP, of Washington, DC, for
amicus curiae Bar Association of the District of Columbia - Patent,
Trademark & Copyright Section. With him on the brief was [Lynn E.
Eccleston]{.underline}, The Eccleston Law Firm, of Washington, DC.

[Norman L. Balmer]{.underline}, Washington & Lee University School of
Law, of Lexington, Virginia, for amicus curiae Lexington Patent Policy
Group.

[Nicholas M. Cannella]{.underline}, Fitzpatrick, Cella, Harper & Scinto,
of New York, New York, for amicus curiae New York Intellectual Property
Law Association. With him on the brief was [F. Christopher
Mizzo]{.underline}. Of counsel on the brief was [Melvin C.
Garner]{.underline}, Darby & Darby P.C., of New York, New York.

[Donald S. Chisum]{.underline}, Morrison & Foerster LLP, of Palo Alto,
California, for amici curiae BEA Systems, Inc. and Novell, Inc. With him
on the brief was [Emily A. Evans]{.underline}. Of counsel were [Michael
A. Jacobs]{.underline} and [Alison M. Tucher]{.underline}, of San
Francisco, California.

[Donald R. Dunner]{.underline}, Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., of Washington, DC, for amicus curiae American
Intellectual Property Law Association. With him on the brief was
[Jeffrey I.D. Lewis]{.underline}, Patterson, Belknap, Webb & Tyler, LLP,
of New York, New York. Also on the brief was [David G.
Conlin]{.underline}, Edwards & Angell, LLP, of Boston, Massachusetts.

[George E. Hutchinson]{.underline}, Executive Director, Federal Circuit
Bar Association, of Washington, DC, for amicus curiae Federal Circuit
Bar Association. With him on the brief was [Robert L.
Baechtold]{.underline}, Fitzpatrick, Cella, Harper & Scinto, of New
York, New York.

[Jerold A. Jacover]{.underline}, Brinks Hofer Gilson & Lione, of
Chicago, Illinois, for amicus curiae The City of Chicago. With him on
the brief were [Roy E. Hofer]{.underline}, [Thomas J.
Filarski]{.underline}, [Meredith Martin Addy]{.underline} and [Janet A.
Pioli]{.underline}.

[Kelly L. Morron]{.underline}, Chadbourne & Parke LLP, of New York, New
York, for amicus curiae The Association of the Bar of the City of New
York. With him on the brief was [Peter A. Sullivan]{.underline}, Hughes
Hubbard & Reed LLP, of New York, New York.

[Steven L. Friedman]{.underline}, Dilworth Paxson LLP, of Philadelphia,
Pennsylvania, for amicus curiae Securities Industry Association.

[Ronald E. Myrick]{.underline}, Chair, Amicus Brief Committee,
Intellectual Property Owners Association, of Washington, DC, for amicus
curiae Intellectual Property Owners Association. With him on the brief
were [Paul H. Berghoff]{.underline} and [Joshua R. Rich]{.underline},
McDonnell Boehnen Hulbert & Berghoff, of Chicago, Illinois. Of counsel
was [Herbert C. Wamsley]{.underline}, Intellectual Property Owners
Association, of Washington, DC.

[Frank E. Scherkenbach]{.underline}, Fish & Richardson P.C., of Boston,
Massachusetts, for amicus curiae Microsoft Corporation. With him on the
brief were [John A. Dragseth]{.underline}, of Minneapolis, Minnesota;
and [Jennifer K. Bush]{.underline}, of San Diego, California.

[Steven C. Sereboff]{.underline}, SoCal IP Law Group, of Westlake
Village, California, for amicus curiae Conejo Valley Bar Association.
With him on the brief was [Karol M. Pessin]{.underline}.

[Edward R. Reines]{.underline}, Weil, Gotshal & Manges LLP, of Redwood
Shores, California, for amici curiae United States Council for
International Business, et al. With him on the brief were [Matthew D.
Powers]{.underline} and [Steven C. Carlson]{.underline}.

[Elizabeth H. Rader]{.underline}, Center for Internet & Society,
Stanford Law School, of Stanford, California, for amicus curiae Public
Patent Foundation. With her on the brief was [Daniel B.
Ravicher]{.underline}, Executive Director, Public Patent Foundation, of
New York, New York.

[Philip T. Petti]{.underline}, Fitch, Even, Tabin & Flannery, of
Chicago, Illinois, for amicus curiae The Association of Patent Law
Firms. With him on the brief was [G. Paul Edgell]{.underline}.

[Mitchell G. Stockwell]{.underline}, Kilpatrick Stockton LLP, of
Atlanta, Georgia, for amicus curiae Association of Corporate Counsel.
With him on the brief was [Cynthia B. Rothschild]{.underline}, of
Winston-Salem, North Carolina.

[Joshua D. Sarnoff]{.underline}, Glushko-Samuelson Intellectual Property
Law Clinic, Washington College of Law, American University, of
Washington, DC, for amicus curiae Public Knowledge.

[Brian P. Barrett]{.underline}, Eli Lilly and Company, of Indianapolis,
Indiana, for amicus curiae Biotechnology Industry Organization. With him
on the brief was [Thomas S. Borecki]{.underline}, Baxter Healthcare
Corporation, of Deerfield, Illinois.

[Joel W. Nomkin]{.underline}, Brown & Bain, P.A., of Phoenix, Arizona,
for amicus curiae Semiconductor Industry Association.

[William A. Rakoczy]{.underline}, Lord, Bissell & Brook LLP, of Chicago,
Illinois, for amicus curiae Generic Pharmaceutical Association. With him
on the brief was [Hugh S. Balsam]{.underline}.

[L.J. Chris Martiniak]{.underline}, Heller Ehrman White & McAuliffe LLP,
of San Francisco, California, for amici curiae Computer Associates
International, Inc., et al.

[Dennis W. Archer]{.underline}, President, American Bar Association, of
Chicago, Illinois, for amicus curiae American Bar Association. With him
on the brief were [Richard P. Beem]{.underline} and [Joseph N Welch
II]{.underline}.

[L. Gene Spears]{.underline}, Baker Botts, L.L.P., of Houston, Texas,
for amicus curiae Houston Intellectual Property Law Association.

[John E. Peterson]{.underline}, Paul, Hastings, Janofsky & Walker, LLP,
of San Diego, California, for amicus curiae San Diego Intellectual
Property Law Association. With him on the brief were [Douglas E.
Olson]{.underline} and [Howard N. Wisnia]{.underline}.

Appealed from: United States District Court for the Eastern District of
Virginia

Judge T. S. Ellis, III

# United States Court of Appeals for the Federal Circuit

01-1357, -1376, 02-1221, -1256

KNORR-BREMSE SYSTEME FUER NUTZFAHRZEUGE GMBH,

Plaintiff-Cross Appellant,

v\.

DANA CORPORATION,

Defendant-Appellant,

and

HALDEX BRAKE PRODUCTS CORPORATION,

and HALDEX BRAKE PRODUCTS AB,

Defendants-Appellants.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: September 13, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before MAYER, [Chief Judge]{.underline}, NEWMAN, LOURIE, CLEVENGER,
RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST, [Circuit
Judges]{.underline}.\*

Opinion for the court filed by [Circuit Judge]{.underline} NEWMAN.
Concurring in part and dissenting in part opinion filed by [Circuit
Judge]{.underline} DYK.

NEWMAN, [Circuit Judge]{.underline}.

Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH is the owner of United
States

Patent No. 5,927,445 (the \'445 patent) entitled \"Disk Brake For
Vehicles Having

Insertable

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\* MICHEL, [Circuit Judge]{.underline}, took no part in the
consideration or decision of this case.

Actuator,\" is sued on July 27, 1999. At trial to the United States
District Court for the Eastern District of Virginia, the appellants Dana
Corporation, Haldex Brake Products Corporation, and Haldex Brake
Products AB were found liable for infringement and willful
infringement.[^1] No damages were awarded, for there were no sales of
the infringing brakes. Based on the finding of willful infringement the
court awarded partial attorney fees under 35 U.S.C. §285.

The appellants seek reversal of the finding of willful infringement,
arguing that an adverse inference should not have been drawn from the
withholding by Haldex of an opinion of counsel concerning the patent
issues, and from the failure of Dana to obtain its own opinion of
counsel. Applying our precedent, the district court inferred that the
opinion of counsel withheld by Haldex was unfavorable to the defendants.
After argument of the appeal we took this case en banc in order to
reconsider our precedent with respect to these aspects. The parties were
asked to submit additional briefing on four questions, and amicus curiae
briefs were invited.[^2] [Knorr-Bremse]{.underline}, 344 F.3d 1336 (Fed.
Cir. 2003) (En banc Order).

We now hold that no adverse inference that an opinion of counsel was or
would have been unfavorable flows from an alleged infringer\'s failure
to obtain or produce an exculpatory opinion of counsel. Precedent to the
contrary is overruled. We therefore vacate the judgment of willful
infringement and remand for re-determination, on consideration of the
totality of the circumstances but without the evidentiary contribution
or presumptive weight of an adverse inference that any opinion of
counsel was or would have been unfavorable.

BACKGROUND

Knorr-Bremse, a German corporation, manufactures air disk brakes for use
in heavy commercial vehicles, primarily Class 6-8 trucks known as
eighteen wheelers, semis, or tractor-trailers. Knorr-Bremse states that
air disk brake technology is superior to the previously dominant
technology of hydraulically or pneumatically actuated drum brakes, and
that air disk brakes have widely supplanted drum brakes for trucks in
the European market.

Dana, an American corporation, and the Swedish company Haldex Brake
Products AB and its United States affiliate, agreed to collaborate to
sell in the United States an air disk brake manufactured by Haldex in
Sweden. The appellants imported into the United States about 100 units
of a Haldex brake designated the Mark II model. Between 1997 and 1999
the Mark II brake was installed in approximately eighteen trucks of Dana
and various potential customers. The trucks were used in transport, and
brake performance records were required to be kept and provided to Dana.
Dana and Haldex advertised these brakes at trade shows and in industry
media in the United States.

Knorr-Bremse in December 1998 orally notified Dana of patent disputes
with Haldex in Europe involving the Mark II brake, and told the
appellants that patent applications were pending in the United States.
On August 31, 1999 Knorr-Bremse notified Dana in writing of infringement
litigation against Haldex in Europe, and that Knorr-Bremse\'s United
States \'445 patent had issued on July 27, 1999. Knorr-Bremse filed this
infringement suit on May 15, 2000. In September 2000 Haldex presented to
the district court a modified brake design designated the Mark III, and
moved for a summary declaration of non-infringement by the Mark III
brake. Knorr-Bremse in turn moved for summary judgment of literal
infringement by the Mark II brake, and infringement by the Mark III
either literally or under the doctrine of equivalents. After a hearing
in November 2000 the district court granted Knorr-Bremse\'s motion for
summary judgment of literal infringement by the Mark II brake, and set
for trial the issues with respect to the Mark III. Before and after the
judgment of infringement by the Mark II, Dana and others continued to
operate trucks in the United States containing the Mark II brake.
Following a bench trial in January 2001, the district court found
literal infringement by the Mark III brake.

On the issue of willful infringement, Haldex told the court that it had
consulted European and United States counsel concerning Knorr-Bremse\'s
patents, but declined to produce any legal opinion or to disclose the
advice received, asserting the attorney-client privilege. Dana stated
that it did not itself consult counsel, but relied on Haldex. Applying
Federal Circuit precedent, the district court found: \"It is reasonable
to conclude that such opinions were unfavorable.\" The court discussed
the evidence for and against willful infringement and concluded that
\"the totality of the circumstances compels the conclusion that
defendants\' use of the Mark II air disk brake, and indeed Dana\'s
continued use of the Mark II air disk brake on various of its vehicles
\[after the judgment of infringement\] amounts to willful infringement
of the \'445 patent.\" [Knorr-Bremse II]{.underline}, 133 F. Supp. 2d at
863. Based on the finding of willful infringement the court found that
the case was \"exceptional\" under 35 U.S.C. §285, and awarded
Knorr-Bremse its attorney fees for the portion of the litigation that
related to the Mark II brake, but not the Mark III.

The appellants appeal only the issue of willfulness of the infringement
and the ensuing award of attorney fees. Knorr-Bremse cross-appeals,
seeking to enjoin the appellants from retaining and using the brake
performance records and test data obtained through use of the Mark II
brake.

I

WILLFUL INFRINGEMENT

In discussing \"willful\" behavior and its consequences, the Supreme
Court has observed that \"\[t\]he word \'willful\' is widely used in the
law, and, although it has not by any means been given a perfectly
consistent interpretation, it is generally understood to refer to
conduct that is not merely negligent,\" [McLaughlin v. Richland Shoe
Co.]{.underline}, 486 U.S. 128, 133 (1988), the Court citing
conventional definitions such as \"voluntary,\" \"deliberate,\" and
\"intentional.\" [Id.]{.underline} The concept of \"willful
infringement\" is not simply a conduit for enhancement of damages; it is
a statement that patent infringement, like other civil wrongs, is
disfavored, and intentional disregard of legal rights warrants
deterrence. Remedy for willful infringement is founded on 35 U.S.C. §284
(\"the court may increase the damages up to three times the amount found
or assessed\") and 35 U.S.C. §285 (\"the court in exceptional cases may
award reasonable attorney fees to the prevailing party\").
[See]{.underline} [generally]{.underline} [Aro Mfg. Co. v. Convertible
Top Replacement Co.]{.underline}, 377 U.S. 476, 508 (1964) (the patentee
\"could in a case of willful or bad-faith infringement recover punitive
or \'increased\' damages under the statute\'s trebling provision\").

Determination of willfulness is made on consideration of the totality of
the circumstances, [see]{.underline} [Gustafson, Inc. v. Intersystems
Indus. Prods., Inc.]{.underline}, 897 F.2d 508, 510 (Fed. Cir. 1990),
and may include contributions of several factors, as compiled,
[e.g.]{.underline}, in [Rolls-Royce Ltd. v. GTE Valeron
Corp.]{.underline}, 800 F.2d 1101, 1110 (Fed. Cir. 1986) and [Read Corp.
v. Portec, Inc.]{.underline}, 970 F.2d 816, 826-27 (Fed. Cir. 1992).
These contributions are evaluated and weighed by the trier of fact, for,
as this court remarked in [Rite-Hite Corp. v. Kelley Co.]{.underline},
819 F.2d 1120, 1125-26 (Fed. Cir. 1987), \"\'\[w\]illfulness\' in
infringement, as in life, is not an all-or-nothing trait, but one of
degree. It recognizes that infringement may range from unknowing, or
accidental, to deliberate, or reckless, disregard of a patentee\'s legal
rights.\"

Fundamental to determination of willful infringement is the duty to act
in accordance with law. Reinforcement of this duty was a foundation of
the formation of the Federal Circuit court, at a time when widespread
disregard of patent rights was undermining the national innovation
incentive. [See]{.underline} [Advisory Committee On Industrial
Innovation Final Report]{.underline}, Dep\'t of Commerce (Sep. 1979).
Thus in [Underwater Devices, Inc. v. Morrison-Knudsen Co.]{.underline},
717 F.2d 1380 (Fed. Cir. 1983) the court stressed the legal obligation
to respect valid patent rights. The court\'s opinion quoted the
infringer\'s attorney who, without obtaining review by patent counsel of
the patents at issue, advised the client to \"continue to refuse to even
discuss the payment of a royalty.\" [Id.]{.underline} at 1385. The
attorney advised that \"\[c\]ourts, in recent years, have \-- in patent
infringement cases \-- found the patents claimed to be infringed upon
invalid in approximately 80% of the cases,\" and that for this reason
the patentee would probably not risk filing suit. [Id.]{.underline} On
this record of flagrant disregard of presumptively valid patents without
analysis, the Federal Circuit ruled that \"where, as here, a potential
infringer has actual notice of another\'s patent rights, he has an
affirmative duty to exercise due care to determine whether or not he is
infringing,\" including \"the duty to seek and obtain competent legal
advice from counsel before the initiation of any possible infringing
activity.\" [Id.]{.underline} at 1389-90.

[Underwater Devices]{.underline} did not raise any issue of
attorney-client privilege, while applying precedent that a finding of
willfulness requires the factfinder to find by clear and convincing
evidence \"that the infringer acted in disregard of the patent,\" citing
[Stickle v. Heublein, Inc.]{.underline}, 716 F.2d 1550, 1565 (Fed. Cir.
1983). The aspect of privilege arose in [Kloster Speedsteel AB v.
Crucible Inc.]{.underline}, 793 F.2d 1565 (Fed. Cir. 1986), where the
Federal Circuit observed that the infringer \"has not even asserted that
it sought advice of counsel when notified of the allowed claims and
\[the patentee\'s\] warning, or at any time before it began this
litigation,\" and held that the infringer\'s \"silence on the subject,
in alleged reliance on the attorney-client privilege, would warrant the
conclusion that it either obtained no advice of counsel or did so and
was advised that its importation and sale of the accused products would
be an infringement of valid U.S. patents.\" [Id.]{.underline} at 1580.
Thus arose the adverse inference, reinforced in [Fromson v. Western
Litho Plate & Supply Co.]{.underline}, 853 F.2d 1568 (Fed. Cir. 1988),
and establishing the general rule that \"a court must be free to infer
that either no opinion was obtained or, if an opinion were obtained, it
was contrary to the infringer\'s desire to initiate or continue its use
of the patentee\'s invention.\" [Id.]{.underline} at 1572-73. Throughout
this evolution the focus was not on attorney-client relationships, but
on disrespect for law. However, implementation of this precedent has
resulted in inappropriate burdens on the attorney-client relationship.

We took this case en banc to review this precedent. While judicial
departure from stare decisis always requires \"special justification,\"
[Arizona v. Rumsey]{.underline}, 467 U.S. 203, 212 (1984), the
\"conceptual underpinnings\" of this precedent, [see]{.underline}
[id.]{.underline}, have significantly diminished in force. The adverse
inference that an opinion was or would have been unfavorable, flowing
from the infringer\'s failure to obtain or produce an exculpatory
opinion of counsel, is no longer warranted. Precedent authorizing such
inference is overruled.

We answer the four questions presented for en banc review, as follows:

QUESTION 1

> When the attorney-client privilege and/or work-product privilege is
> invoked by a defendant in an infringement suit, is it appropriate for
> the trier of fact to draw an adverse inference with respect to willful
> infringement?

The answer is \"no.\" Although the duty to respect the law is
undiminished, no adverse inference shall arise from invocation of the
attorney-client and/or work product privilege.

The Supreme Court describes the attorney-client privilege as \"the
oldest of the privileges for confidential communications known to common
law,\" and has stressed the public purpose

> to encourage full and frank communication between attorneys and their
> clients and thereby promote broader public interests in the observance
> of law and administration of justice. The privilege recognizes that
> sound legal advice or advocacy serves public ends and that such advice
> or advocacy depends upon the lawyer\'s being fully informed by the
> client.

[Upjohn Co. v. United States]{.underline}, 449 U.S. 383, 389 (1981).
Professor Wigmore has elaborated:

> The lawyer must have the whole of his client\'s case, or he cannot
> pretend to give any useful advice. . . . That the whole will not be
> told to counsel unless the privilege is confidential, is perfectly
> clear. A man who seeks advice, seeks it because he believes that he
> may do so safely; he will rarely make disclosure which may be used
> against him; rather than create an adverse witness in his lawyer, he
> will refuse all private arbitration, and take the chance of a trial.

8 J. Wigmore, [Evidence in Trials at Common Law]{.underline} §2291 at
548 (McNaughton rev. 1961). [See]{.underline} [Hunt v.
Blackburn]{.underline}, 128 U.S. 464, 470 (1888) (the attorney-client
privilege is designed to encourage candid exchange of information).

Although this court has never suggested that opinions of counsel
concerning patents are not privileged, the inference that withheld
opinions are adverse to the client\'s actions can distort the
attorney-client relationship, in derogation of the foundations of that
relationship. We conclude that a special rule affecting attorney-client
relationships in patent cases is not warranted. [See]{.underline}
[Swidler & Berlin v. United States]{.underline}, 524 U.S. 399, 410
(1998) (ad hoc exceptions to privilege may cause \"general erosion\").
There should be no risk of liability in disclosures to and from counsel
in patent matters; such risk can intrude upon full communication and
ultimately the public interest in encouraging open and confident
relationships between client and attorney. As Professor McCormick has
explained, the attorney-client privilege protects \"interests and
relationships which . . . are regarded as of sufficient social
importance to justify some sacrifice of availability of evidence
relevant to the administration of justice.\" 1 [McCormick on
Evidence]{.underline} §72, 299 (5th ed. 1999).

There is precedent for the drawing of adverse inferences in
circumstances other than those involving attorney-client relationships;
for example when a party\'s refusal to testify or produce evidence in
civil suits creates a presumption of an intent to withhold damaging
information that is material to the litigation.[^3] However, the courts
have declined to impose adverse inferences on invocation of the
attorney-client privilege. [See]{.underline}, [e.g.]{.underline},
[Nabisco, Inc. v. PF Brands, Inc.]{.underline}, 191 F.3d 208, 225-26
(2nd Cir. 1999) (no adverse inference from the defendant\'s refusal to
produce an opinion letter of counsel in a trademark dilution case),
[overruled]{.underline} [on]{.underline} [other]{.underline}
[grounds]{.underline} [sub]{.underline} [nom.]{.underline} [Moseley v.
Secret Catalogue]{.underline}, 537 U.S. 418 (2003); [Parker v.
Prudential Insurance Co.]{.underline}, 900 F.2d 772, 775 (4th Cir. 1990)
(no negative inference from assertion of attorney-client privilege). We
now hold that this rule applies to the same extent in patent cases as in
other areas of law. A defendant may of course choose to waive the
privilege and produce the advice of counsel. However, the assertion of
attorney-client and/or work-product privilege and the withholding of the
advice of counsel shall no longer entail an adverse inference as to the
nature of the advice.

QUESTION 2

> When the defendant had not obtained legal advice, is it appropriate to
> draw an adverse inference with respect to willful infringement?

The answer, again, is \"no.\" The issue here is not of privilege, but
whether there is a legal duty upon a potential infringer to consult with
counsel, such that failure to do so will provide an inference or
evidentiary presumption that such opinion would have been negative.

Dana Corporation did not seek independent legal advice, upon notice by
Knorr-Bremse of the pendency of the \'445 application in the United
States and of the issuance of the \'445 patent, followed by the charge
of infringement. In tandem with our holding that it is inappropriate to
draw an adverse inference that undisclosed legal advice for which
attorney-client privilege is claimed was unfavorable, we also hold that
it is inappropriate to draw a similar adverse inference from failure to
consult counsel. The amici curiae describe the burdens and costs of the
requirement, as pressed in litigation, for early and full study by
counsel of every potentially adverse patent of which the defendant had
knowledge, citing cases such as [Johns Hopkins Univ. v. Cellpro,
Inc]{.underline}., 152 F.3d 1342, 1364 (Fed. Cir. 1998), wherein the
court held that to avoid liability for willful infringement in that
case, an exculpatory opinion of counsel must fully address all potential
infringement and validity issues. Although other cases have imposed less
rigorous criteria, the issue has occasioned extensive satellite
litigation, distorting the \"conceptual underpinnings\" of [Underwater
Devices]{.underline} and [Kloster Speedsteel]{.underline}. Although
there continues to be \"an affirmative duty of due care to avoid
infringement of the known patent rights of others,\" [L.A. Gear Inc. v.
Thom McAn Shoe Co.]{.underline}, 988 F.2d 1117, 1127 (Fed. Cir. 1993),
the failure to obtain an exculpatory opinion of counsel shall no longer
provide an adverse inference or evidentiary presumption that such an
opinion would have been unfavorable.

QUESTION 3

> If the court concludes that the law should be changed, and the adverse
> inference withdrawn as applied to this case, what are the consequences
> for this case?

A

The district court based its willfulness determination on several
factors in addition to the adverse inference arising from the assertion
of attorney-client privilege by Haldex and the failure of Dana to obtain
legal advice. This court has explained that \"there are no hard and fast
per se rules\" with respect to willfulness of infringement.
[Rolls-Royce]{.underline}, 800 F.2d at 1110. Precedent illustrates
various factors, some weighing on the side of culpability and some that
are mitigating or ameliorating. [See]{.underline} [Read v.
Portec]{.underline}, [supra]{.underline}.

The district court found, on the evidence presented, that literal
infringement by the Mark II brake was reasonably clear and did not
present close legal or factual questions. As for the validity of the
\'445 patent, the court found that \"given the quantity and quality of
the evidence presented by defendants at trial on the issues of
obviousness and indefiniteness, it cannot fairly be said that
defendants, throughout the litigation, had a good faith belief that the
\'445 patent would ultimately be found invalid on these grounds.\"
[Knorr-Bremse II]{.underline}, 133 F. Supp. 2d at 863. The court also
found that the appellants failed to take prompt remedial action to
terminate infringement after the judgment of literal infringement by the
Mark II, stating that \"Dana deliberately yielded to market pressures in
deciding to continue using the infringing Mark II air disk brakes on
test vehicles pending future receipt of replacement Mark III air disk
brakes.\" [Id.]{.underline} The court also found that \"although Haldex
indeed developed the Mark III air disk brake in a good faith effort to
design around the \'445 patent, Haldex nonetheless continued to use the
Mark II air disk brake throughout the redesign effort, including
displaying Mark II air disk brakes at various automotive conferences in
the United States and distributing Mark II promotional literature to
potential customers at these conferences,\" [id.]{.underline}; the court
also noted that infringement was not then enjoined. [Knorr-Bremse
III]{.underline}, at 2.

The district court also considered Haldex\'s invocation of the
attorney-client privilege in order to withhold its opinions of counsel,
and Dana\'s failure to obtain an independent legal opinion despite the
warning and notice of infringement. The appellants argue that but for
the adverse inference of unfavorable opinions drawn from these actions,
the finding of willfulness of infringement is not supported.
Knorr-Bremse responds that willful infringement is well supported by the
remaining findings. Because elimination of the adverse inference as
drawn by the district court is a material change in the totality of the
circumstances, a fresh weighing of the evidence is required to determine
whether the defendants committed willful infringement. This
determination is the primary responsibility and authority of the
district court. We therefore vacate the finding of willful infringement
and remand for redetermination of the issue.

Several amici curiae raised the question of whether the trier of fact,
particularly a jury, can or should be told whether or not counsel was
consulted (albeit without any inference as to the nature of the advice
received) as part of the totality of the circumstances relevant to the
question of willful infringement. The amici pointed to various
hypothetical circumstances in which such information could be relevant,
even when there was no issue of attorney-client privilege. That aspect
is not raised by this case, was not before the district court, and has
not been briefed on this appeal. Today we resolve only the question of
whether adverse inferences of unfavorable opinions can be drawn, and
hold that they can not.

B

The appellants also argue that the award of attorney fees is a matter of
punitive damages, and is therefore improper. Precedent and statute do
not support this position. 35 U.S.C. §285 provides that \"the court in
exceptional cases may award reasonable attorney fees to the prevailing
party\"; and the court has confirmed that a finding of willful
infringement may qualify a case as exceptional under §285.
[See]{.underline}, [e.g.]{.underline}, [Modine Mfg. Co. v. The Allen
Group, Inc.]{.underline}, 917 F.2d 538, 543 (Fed. Cir. 1990). That there
were not actual damages does not render the award of attorney fees
punitive. Attorney fees are compensatory, and may provide a fair remedy
in appropriate cases. Upon a finding of willful infringement, the award
of attorney fees is within the district court\'s sound discretion.

In view of our vacatur of the finding of willful infringement, the award
of attorney fees is also vacated. On remand the award may be
reconsidered, should the judgment of willful infringement be restored.

QUESTION 4

> Should the existence of a substantial defense to infringement be
> sufficient to defeat liability for willful infringement even if no
> legal advice has been secured?

The answer is \"no.\" Precedent includes this factor with others to be
considered among the totality of circumstances, stressing the \"theme of
whether a prudent person would have sound reason to believe that the
patent was not infringed or was invalid or unenforceable, and would be
so held if litigated,\" [SRI Int\'l, Inc. v. Advanced Tech. Labs.
Inc.]{.underline}, 127 F.3d 1462, 1465 (Fed. Cir. 1997). However,
precedent also authorizes the trier of fact to accord each factor the
weight warranted by its strength in the particular case. We deem this
approach preferable to abstracting any factor for per se treatment, for
this greater flexibility enables the trier of fact to fit the decision
to all of the circumstances. We thus decline to adopt a per se rule.

II

THE CROSS APPEAL

The district court rejected Knorr-Bremse\'s request for destruction of
the technical data that were obtained by the appellants for the Haldex
air disk brakes. The court found that much of the data were obtained
before issuance of the patent, and that some of the data relate to
non-infringing aspects including design-around efforts and safety
studies. [Knorr-Bremse III]{.underline}, at 2. We do not discern
reversible error in the court\'s decision of this issue. That decision
is affirmed.

SUMMARY

An adverse inference that a legal opinion was or would have been
unfavorable shall not be drawn from invocation of the attorney-client
and/or work product privileges or from failure to consult with counsel.
Contrary holdings and suggestions of precedent are overruled.

This case is remanded for redetermination of the issue of willful
infringement and any remedy therefor.

Costs

Each party shall bear its costs.

[VACATED AND REMANDED; CROSS-APPEAL AFFIRMED]{.underline}

United States Court of Appeals for the Federal Circuit

01-1357, -1376, 02-1221, -1256

KNORR-BREMSE SYSTEME FUER NUTZFAHRZEUGE GMBH,

> Plaintiff-Cross Appellant,

v\.

DANA CORPORATION,

Defendant-Appellant,

and

HALDEX BRAKE PRODUCTS CORPORATION,

and HALDEX BRAKE PRODUCTS AB,

Defendants-Appellants.

DYK, [Circuit Judge]{.underline}, concurring-in-part and
dissenting-in-part.

I join the majority opinion insofar as it eliminates an adverse
inference (that an opinion of counsel would be unfavorable) from the
infringer's failure to disclose or obtain an opinion of counsel. I do
not join the majority opinion to the extent that it may be read as
reaffirming that "where, as here, a potential infringer has actual
notice of another's patent rights, he has an affirmative duty to
exercise due care to determine whether or not he is infringing." Maj.
Op., [ante]{.underline}, at 7 (quoting [Underwater Devices, Inc. v.
Morrison-Knudsen Co.]{.underline}, 717 F.2d 1380, 1389 (Fed. Cir.
1983)).

There is a substantial question as to whether the due care requirement
is consistent with the Supreme Court cases holding that punitive damages
can only be awarded in situations where the conduct is reprehensible.
[See, e.g.]{.underline}, [State Farm Mut. Auto. Ins. Co. v.
Campbell]{.underline}, 538 U.S. 408 (2003); [BMW of N. Am., Inc. v.
Gore]{.underline}, 517 U.S. 559 (1996) ("[Gore]{.underline}"). While the
majority properly refrains from addressing this constitutional issue, as
it has not been briefed or argued by the parties or [amici]{.underline}
in this case, I write separately to note my view that enhancing damages
for failure to comply with the due care requirement cannot be squared
with those recent Supreme Court cases.

I

We have often recognized that enhanced damages awarded pursuant to 35
U.S.C. § 284 are a form of punitive damages. [See, e.g.]{.underline},
[Sensonics, Inc. v. Aerosonic Corp.]{.underline}, 81 F.3d 1566, 1574
(Fed. Cir. 1996) ("\[E\]nhanced damages are punitive, not
compensatory.").[^4] Punitive damages are awarded to punish
reprehensible behavior, referred to in this context as willful
infringement. "Enhancement . . . depends on a showing of willful
infringement or other indicium of bad faith warranting punitive
damages." [Id.]{.underline}; [see also]{.underline} [Nat'l Presto
Indus., Inc. v. West Bend Co.]{.underline}, 76 F.3d 1185, 1192 (Fed.
Cir. 1996) ("Liability for willfulness of infringement turns on
considerations of intent, state of mind, and culpability."); [Beatrice
Foods Co. v. New Eng. Printing & Lithographing Co.]{.underline}, 923
F.2d 1576, 1579 (Fed. Cir. 1991) ("Under our cases, enhanced damages may
be awarded only as a penalty for an infringer's increased culpability,
namely willful infringement or bad faith.").

There are many circumstances that may create an appropriate predicate
for a finding of willful infringement, and hence punitive damages,
including deliberate copying, concealing infringing activity,
infringement where the infringer knows that it is infringing or where it
knows it has only frivolous defenses, infringement designed to injure a
competitor, etc. We have appropriately held that such activity is
reprehensible and that enhanced damages may be awarded in such
circumstances. [See, e.g.]{.underline}, [Hoechst Celanese Corp. v. BP
Chems. Ltd.]{.underline}, 78 F.3d 1575, 1583 (Fed. Cir. 1996) ("Willful
infringement is . . . a measure of reasonable commercial behavior in the
context of the tort of patent infringement. The extent to which the
infringer disregarded the property rights of the patentee, the
deliberateness of the tortious acts, or other manifestations of
unethical or injurious commercial conduct, may provide grounds for a
finding of willful infringement and the enhancement of damages."); [L.A.
Gear, Inc. v. Thom McAn Shoe Co.]{.underline}, 988 F.2d 1117, 1127 (Fed.
Cir. 1993) (reversing the district court's ruling that infringement was
not willful because the infringer's "deliberate copying was strong
evidence of willful infringement, without any exculpatory evidence to
balance the weight"); [Read Corp. v. Portec, Inc.]{.underline}, 970 F.2d
816, 827 (Fed. Cir. 1992) (including "\[w\]hether defendant attempted to
conceal its misconduct" as a factor to be considered in enhancing
damages); [Kaufman Co. v. Lantech, Inc.]{.underline}, 807 F.2d 970,
978-79 (Fed. Cir. 1986) (affirming the district court's finding of
willfulness based on the district court's findings that the infringer
"faithfully copied the claimed invention, took an untenable position
regarding validity of the patent, and [presented a frivolous defense of
noninfringement]{.underline}" (emphasis added)).

But a potential infringer's mere failure to engage in due care is not
itself reprehensible conduct. To hold that it is effectively shifts the
burden of proof on the issue of willfulness from the patentee to the
infringer, which must show that its infringement is not willful by
showing that it exercised due care. While the duty of care is only one
factor in the determination of enhanced damages, no one can seriously
doubt that, both in the minds of the jurors (in determining willfulness)
and in the decision of the district court (concerning enhancement), the
duty of care is by far the preeminent factor in the vast majority of
cases.

II

The duty of care requirement finds no support in the patent damages
statute, the legislative history, or Supreme Court opinions. The
enhancement statute merely provides that "the court may increase the
damages up to three times the amount found \[by the jury\] or assessed
\[by the court\]." 35 U.S.C. § 284 (2000). No other mention is made of
enhancement, willful infringement, or a duty of care. The present
statute, which was enacted in 1952, simply "consolidates the provisions
relating to damages" from the previous version of the patent law. S.
Rep. No. 82-1979, at 29 (1952); H.R. Rep. No. 82-1923, at 29 (1952). The
previous version of the statute -- in effect since 1836 -- provided that
courts can enhance damages "according to the circumstances of the
case."[^5] Our attention has been directed to no meaningful legislative
history for the current statute or the earlier statutes.

Nor does any of the few Supreme Court cases interpreting section 284
provide any basis for a duty of care. Indeed, they appear to limit
enhanced damages to cases of "willful or bad-faith infringement," [Aro
Mfg. Co. v. Convertible Top Replacement Co.]{.underline}, 377 U.S. 476,
508 (1964) (stating that the patentee "could in a case of willful or
bad-faith infringement recover punitive or 'increased' damages under the
statute's trebling provision"), or "wanton or malicious" injury,
[Seymour v. McCormick]{.underline}, 57 U.S. 480, 489 (1853) ("It is
true, where the injury is wanton or malicious, a jury may inflict
vindictive or exemplary damages, not to recompense the plaintiff, but to
punish the defendant."). Furthermore, the entire provenance of the due
care requirement is dictum in earlier regional circuit cases.
[See]{.underline} [Milgo Elec. Corp. v. United Bus. Communications,
Inc.]{.underline}, 623 F.2d 645, 666 (10th Cir.), [cert.
denied]{.underline}, 449 U.S. 1066 (1980); [Coleman Co. v. Holly Mfg.
Co.]{.underline}, 269 F.2d 660, 666 (9th Cir. 1959).

III

Whatever justification there may have been for the due care approach in
the past, that doctrine has been undermined by the decisions of the
Supreme Court beginning in 1996, which have limited the award of
punitive damages on due process grounds. [See, e.g.]{.underline}, [State
Farm]{.underline}, 538 U.S. at 416-18; [Gore]{.underline}, 517 U.S. at
568. The Supreme Court first held in [Gore]{.underline} that an award of
punitive damages can violate the Due Process Clause,[^6] stating that
"\[p\]erhaps the most important indicium of the reasonableness of a
punitive damages award is the degree of reprehensibility of the
defendant's conduct." 517 U.S. at 575. The Court stated:

> There is no evidence that BMW acted in bad faith when it sought to
> establish the appropriate line between presumptively minor damage and
> damage requiring disclosure to purchasers. . . . In this regard, it is
> also significant that there is no evidence that BMW persisted in a
> course of conduct after it had been adjudged unlawful on even one
> occasion, let alone repeated occasions.
>
> Finally, the record in this case discloses no deliberate false
> statements, acts of affirmative misconduct, or concealment of evidence
> of improper motive . . . .

[Id.]{.underline} at 579. The Court further explained the importance of
reprehensibility to an award of punitive damages in [State
Farm]{.underline}, making clear that reprehensibility is indispensable
to a punitive damages award:

> \[P\]unitive damages should only be awarded if the defendant's
> culpability, after having paid compensatory damages, is so
> reprehensible as to warrant the imposition of further sanctions to
> achieve punishment or deterrence.

[Id.]{.underline} at 419. Thus, even where the damages multiple is
within accepted bounds, the Court has required a finding of
reprehensibility as a predicate to an award of punitive damages. Patent
law is not an island separated from the main body of American
jurisprudence. The same requirement of reprehensibility restricts an
award of enhanced damages in patent cases as in other cases. When an
infringer merely fails to exercise his supposed duty of care, there are
"none of the circumstances ordinarily associated with egregiously
improper conduct" that could be sufficiently reprehensible to warrant
imposition of punitive damages, as in [Gore]{.underline}. 517 U.S. at
580.[^7]

V

Finally, in my view, the imposition of the due care requirement has
produced nothing of benefit to the patent system. In cases where the
potential infringer has been guilty of deliberate copying, concealment
of infringement, or other reprehensible conduct, enhanced damages serve
a useful purpose. But where such reprehensible conduct is absent, it is
unnecessary to stretch the law of punitive damages to protect the
patentee because the patentee can secure a preliminary injunction once
he has learned of infringement. If the patentee is unable to secure a
preliminary injunction because he cannot make a clear showing of
likelihood of success on the merits (the accused infringer having a
substantial defense, [see, e.g.]{.underline}, [Nat'l Steel Car, Ltd. v.
Canadian Pac. Ry., Ltd.]{.underline}, 357 F.3d 1319, 1325 (Fed. Cir.
2004); [Amazon.com, Inc. v. Barnesandnoble.com, Inc.]{.underline}, 239
F.3d 1343, 1350-51 (Fed. Cir. 2001)), there is no reason the patentee
should be able to secure punitive damages based merely on a showing of
lack of "due care" by the accused infringer during the pendency of the
litigation.

Second, the due care requirement exists in the context of patent law
that is complex, where ultimate outcomes are difficult to predict, and,
as the majority holds, the existence of a substantial defense on the
merits will not bar a finding of willfulness. [See]{.underline} Maj.
Op., [ante]{.underline}, at 14. As the [amici]{.underline} point out,
the due care requirement has fostered a reluctance to review patents for
fear that the mere knowledge of a patent will lead to a finding of lack
of due care, [see, e.g.]{.underline}, [Amici Curiae]{.underline} Br. of
U.S. Council for Int'l Bus. [et al.]{.underline} at 9 n.4; a cottage
industry of window-dressing legal opinions by third party counsel
designed to protect the real decision-making process between litigating
counsel and the company's executives, [see, e.g.]{.underline},
[id.]{.underline} at 9; the imposition of substantial legal costs on
companies seeking to introduce innovative products, [see,
e.g.]{.underline}, [Amicus Curiae]{.underline} Br. of Sec. Indus. Ass'n
at 9-11; and an enhanced ability of holders of dubious patents to force
competitors' products off of the market through the threat of enhanced
damages, [see, e.g.]{.underline}, [id.]{.underline} at 5-6. These
concerns have led [amici]{.underline},[^8] the Federal Trade Commission
working group,[^9] and a committee of the National Academies,[^10] to
urge us to reconsider our willfulness jurisprudence.

The majority opinion here ameliorates these concerns to some very
limited extent by eliminating the inference that an undisclosed or
unobtained opinion of counsel was or would have been adverse. But the
majority opinion does not address whether a potential infringer can
satisfy the requirement of due care without securing and disclosing an
opinion of counsel, or, if such an opinion is not absolutely required,
whether an adverse inference can be drawn from the accused infringer's
failure to obtain and disclose such an opinion. More fundamentally, the
opinion does not address whether the due care requirement, whatever its
parameters, is consistent with the Supreme Court's punitive damages
jurisprudence.

I would recognize that the due care requirement is a relic of the past
and eliminate it as a factor in the willfulness and enhancement
analysis.

[^1]: [Knorr‑Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana
    Corp.]{.underline}, 133 F. Supp. 2d 833 (E.D. Va. 2001) (partial
    summary judgment) (\"[Knorr‑Bremse I]{.underline}\"); 133 F. Supp.
    2d 843 (E.D. Va. 2001) (findings of fact and conclusions of law)
    (\"[Knorr‑Bremse II]{.underline}\"); Civ. A. No. 00-803-A (E.D. Va.
    Mar. 7, 2001) (final judgment); No. 00-803-A (E.D. Va. Apr. 9, 2001)
    (amended final judgment) (\"[Knorr-Bremse III]{.underline}\").

[^2]: Amicus curiae briefs were filed by the American Bar Association;
    American Intellectual Property Law Association; Association of the
    Bar of the City of New York; Association of Corporate Counsel;
    Association of Patent Law Firms; Bar Association of the District of
    Columbia; BEA Systems, Inc. and Novell, Inc.; Biotechnology Industry
    Organization; The City of Chicago; Computer Associates
    International, Inc. et al.; Conejo Valley Bar Association; Federal
    Circuit Bar Association; Generic Pharmaceutical Association; Houston
    Intellectual Property Law Association; Intellectual Property Owners
    Association; Lexington Patent Policy Group; Microsoft Corporation;
    New York Intellectual Property Law Association; Public Knowledge;
    Public Patent Foundation; San Diego Intellectual Property Law
    Association; Securities Industry Association; Semiconductor Industry
    Association; and the United States Council for International
    Business, Center for Advanced Study & Research on Intellectual
    Property et al.

[^3]: For example, in [Baxter v. Palmigiano]{.underline}, 425 U.S. 308,
    318 (1976) the Court confirmed that in civil proceedings fact
    finders may draw adverse inferences against a party who refuses to
    testify. [See]{.underline} [also]{.underline}, [e.g.]{.underline},
    [International Chemical Workers Union v. Columbian Chemicals
    Co.]{.underline}, 331 F.3d 491, 497 (5th Cir. 2003) (\"when a
    subpoena is ignored, a party can draw an adverse inference\");
    [Penalty Kick Management, Ltd. v. Coca Cola Co.]{.underline}, 318
    F.3d 1284, 1294 (11th Cir. 2003) (adverse inference drawn from a
    party\'s failure to preserve evidence when predicated on bad faith);
    [MacNaughton v. United States]{.underline}, 888 F.2d 418, 423 (6th
    Cir. 1989) (permitting adverse inference from failure to call
    witnesses peculiarly within the party\'s power to produce).

[^4]: This case, of course, does not involve an award of enhanced
    damages, but rather an award of attorney fees based on a willfulness
    finding. The majority correctly rejects the contention that an award
    of attorney fees pursuant to 35 U.S.C. § 285 is a form of punitive
    damages. [See]{.underline} Maj. Op., [ante]{.underline}, at 13-14.
    While attorney fees are not punitive damages, our case law makes
    clear that, where attorney fees are awarded based on a willfulness
    finding, the same standard for willfulness applies to both
    enhancement and attorney fees. [See, e.g.]{.underline}, [Golight,
    Inc. v. Wal-Mart Stores, Inc.]{.underline}, 355 F.3d 1327, 1340
    (Fed. Cir. 2004). Thus, while it might not be unconstitutional to
    award attorney fees on a due care theory, if we were to restrict the
    award of enhanced damages, an award of attorney fees on a
    willfulness theory would also be restricted because the same
    standard applies to both.

[^5]: The Patent Act of 1870 provided:

    > \[W\]henever in any \[patent infringement\] action a verdict shall
    > be rendered for the plaintiff, the court may enter judgment
    > thereon for any sum above the amount found by the verdict as the
    > actual damages sustained, according to the circumstances of the
    > case, not exceeding three times the amount of such verdict,
    > together with the costs.

    Ch. 230, § 59, 16 Stat. 198, 207 (1870). The Patent Act of 1836
    likewise provided:

    > \[I\]t shall be in the power of the court to render judgment for
    > any sum above the amount found by such verdict as the actual
    > damages sustained by the plaintiff, not exceeding three times the
    > amount thereof, according to the circumstances of the case, with
    > costs . . . .

    Ch. 357, § 14, 5 Stat. 117, 123 (1836).

[^6]: The Court had previously held in [Pacific Mutual Life Insurance
    Co. v. Haslip]{.underline}, 499 U.S. 1 (1991), that punitive damage
    awards can violate the Due Process Clause, but the particular damage
    award in [Haslip]{.underline} did not violate that clause.
    [Id.]{.underline} at 18-19.

[^7]: The imposition of treble damages by a court based on a lack of due
    care by an infringer is unlike such an imposition for violations of
    the Sherman Act or for intentional use of a counterfeit mark in
    violation of the Lanham Act, where damages are automatically trebled
    pursuant to statute, based on a congressional judgment that the
    conduct is [per se]{.underline} reprehensible. [See]{.underline} 15
    U.S.C. § 15(a) (2000); 15 U.S.C. § 1117(b) (2000). Here,
    significantly and unlike in those situations, there is no judgment
    by Congress that infringement is [per se]{.underline} reprehensible
    conduct requiring automatic trebling.

[^8]: [See, e.g.]{.underline}, Br. for [Amicus Curiae]{.underline} Am.
    Intellectual Prop. Law Ass'n at 6-8; Br. for [Amicus
    Curiae]{.underline} N.Y. Intellectual Prop. Law Ass'n at 9-11.

[^9]: [See, e.g.]{.underline}, Federal Trade Comm'n, [To Promote
    Innovation: The Proper Balance of Competition and Patent Law and
    Policy]{.underline}, ch. 5, at 31 (2003), [available at]{.underline}
    http://www.ftc.gov/os/2003/10/innovationrpt.pdf ("The Commission
    recommends that legislation be enacted requiring either actual,
    written notice of infringement from the patentee or deliberate
    copying of the patentee's invention, knowing it to be patented, as a
    predicate for willful infringement."). [See generally]{.underline}
    [id.]{.underline} at 28-31.

[^10]: [See, e.g.]{.underline}, Comm. on Intellectual Prop. Rights in
    the Knowledge-Based Economy, The National Academies, [A Patent
    System for the 21^st^ Century]{.underline} 119 (Stephen A. Merrill
    et al. eds., 2004), [available at]{.underline}
    http://www.nap.edu/html/patentsystem/ 0309089107.pdf ("Lacking
    evidence of its beneficial deterrent effect but with evidence of its
    perverse anti-disclosure consequences, the committee recommends
    elimination of the provision for enhanced damages based on a
    subjective finding of willful infringement."). [See
    generally]{.underline} [id.]{.underline} at 118-20.