On April 23, 2015, Chief Judge Stark, in the district of Delaware, granted plaintiffs’ motion for summary judgment of no willful infringement of the patents asserted in defendant’s counterclaims, finding that the first prong of In re Seagate cannot be satisfied.

Defendant/counter plaintiff had asserted the same patents against the same parties in an earlier litigation, in which plaintiffs/counter defendants were found to be willful infringers. The products at issue in this case were based on the products in the earlier case, but they were redesigned consistent with previous statements by defendant indicating non-infringing alternatives. Defendant/counter plaintiff admitted that the products in the current case were not identical to those in the earlier case, but claimed that the products were “essentially unchanged.” The court found that plaintiff/counter defendants had credible, reasonable non-infringement theories based on the redesign, which was based on defendant/counter plaintiff’s previous statements, as well as the fact that the litigation positions regarding the asserted patents had changed from the earlier litigation. As a result, defendant/counter plaintiff could not prove by clear and convincing evidence that plaintiffs/counter defendants acted despite an objectively high likelihood that their actions constituted infringement of a valid patent.

Fairchild Semiconductor Corporation, et. al. v. Power Integrations Inc., Civ. No. 1:12-cv-00540-LPS (D. Del.).