In patent litigation, a court will sometimes dismiss some, but not all, defenses of an accused infringer in a summary judgment ruling.  Even though some of its defenses were rejected by the court, the accused infringer may nonetheless continue to sell its accused products.  In this scenario, questions arise as to whether the continued sales constitute willful infringement, and if so, whether the local patent rule infringement contentions must be amended to present this evidence of willful infringement at trial.

In Sloan Valve Co. v. Zurn Industries, Inc. (.pdf), 2014 WL 51293, *3 (N.D.Ill. Jan. 7, 2014), U.S. District Court Judge St. Eve examined this same question and held that the patent owner was not permitted to amend its contentions or tell the jury that the accused infringer continued to sell its accused products after its invalidity defenses had been defeated at the summary judgment stage.  Unpersuasive to the Court were two prior opinions concluding that a patent owner could inform the jury that the accused infringer continued to sell its accused products after the court granted summary judgment finding infringement.  See, Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 2008 WL 6873811 at *5 (C.D. Cal. Jan. 3, 2008) (finding that defendant “willfully infringed [plaintiff’s] patent when it continued to sell the infringing frames after the Court granted [plaintiff’s] motion for summary judgment on the issue of infringement”); Avocent Huntsville Corp. v. ClearCube Tech., Inc., 2006 WL 2109503 (N.D. Ala. July 28, 2006) (finding that court’s granting of plaintiff’s motion for partial summary judgment on infringement “may fall under the rubric of the ‘totality of the circumstances’ test, tending to show [defendant’s] infringement was (and continues to be) willful”).  To Judge St. Eve, these cases were distinguishable because they resolved issues of infringement on summary judgment, not issues of validity.  Thus, she held that “[patent owner] may not introduce evidence that certain of [accused infringer's] affirmative defenses did not survive summary judgment.”

In support of the holding, the Court found that “[t]he Court’s summary judgment opinion on certain affirmative defenses in this case is not the type of information that is highly relevant to final infringement contentions and certainly does not meet the good cause standard that Local Patent Rule 3.4 requires. Rather, [patent  owner's] proposed amendments give credence to [accused infringer's] argument that [patent owner's] true intent is to inform the jury of the Court’s adverse rulings on certain of [accused infringer's] affirmative defenses. This is not a proper use of final infringement contentions.”