Opposition Brief — Corning Optical Communications RF LLC, Petitioner v. PPC Broadband, Inc.

Supreme Court briefNov 5, 2018

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No. 18-395

IN THE

Supreme Court of the United States

————

CORNING OPTICAL COMMUNICATIONS RF LLC,

Petitioner,

PPC BROADBAND, INC.,

Respondent.

————

On Petition for Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

————

BRIEF IN OPPOSITION

————

J. MICHAEL JAKES

Counsel of Record

FINNEGAN, HENDERSON,

FARABOW GARRETT &

DUNNER, LLP

901 New York Avenue, NW

Washington, DC 20001-4413

(202) 408-4000

mike.jakes@finnegan.com

Counsel for Respondent

November 5, 2018

WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D. C. 20002

QUESTIONS PRESENTED

The Questions Presented by the Petitioner, Corning

Optical Communications RF LLC, misstate the issues

and underlying facts to try to create an appearance of

a conflict with this Court’s precedent. But in reality,

no such conflict exists. Contrary to what Corning

now says, the district court did consider the reasonableness of Corning’s conduct when deciding whether

to enhance damages based on the jury’s finding of

willful infringement. And after considering the totality

of the evidence, which included the 2013 decision of

the Court of International Trade (CIT), the district

court exercised its discretion to double, rather than

triple, the damages award. The Court of Appeals for

the Federal Circuit then affirmed the district court’s

decision to enhance damages, finding no abuse of

discretion.

Thus, the Questions Presented here, when properly

stated, are:

1. Did the Federal Circuit correctly conclude that

the district court did not abuse its discretion when it

awarded double damages for Corning’s egregious infringing conduct based on the totality of the evidence?

2. Did the district court correctly instruct the jury

that willful infringement requires proof of intentional

or knowing conduct, which may include proof that

the accused infringer acted recklessly regarding the

patent holder’s rights?

(i)

PARTIES TO THE PROCEEDING BELOW

The parties to this proceeding are the Petitioner,

Corning Optical Communications RF LLC, and the

Respondent, PPC Broadband, Inc.

CORPORATE DISCLOSURE STATEMENT

PPC Broadband, Inc., is a wholly owned subsidiary

of Belden Inc., a public company. To our knowledge,

there is no other parent corporation or publicly held

company that owns 10 percent or more of the stock of

PPC Broadband, Inc.

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ...............................

PARTIES TO THE PROCEEDING BELOW .....

CORPORATE DISCLOSURE STATEMENT .....

OPINIONS ...........................................................

JURISDICTION ..................................................

INTRODUCTION ................................................

STATEMENT OF THE CASE ............................

I. PPC’s Inventions .......................................

II. Corning’s Infringing Conduct ...................

III. The CIT Action ..........................................

IV. The New York Action ................................

The Federal Circuit ..................................

REASONS FOR DENYING THE PETITION ....

I. The District Court’s Discretionary Determination to Award Enhanced Damages

Does Not Warrant Further Review ..........

A. The District Court Considered the

2013 CIT Decision and Found It

Unpersuasive .......................................

B. There Is No Trend of Courts Ignoring

Evidence of Objective Reasonableness ......................................................

(iii)

TABLE OF CONTENTS—Continued

Page

C. Fee-Shifting Cases Do Not Compel

Giving “Substantial Weight” to Certain

Evidence; Indeed, Making an “Objectively Reasonable” Defense Dispositive

Contradicts Halo .................................

D. Corning’s Mischaracterization of WBIP

Does Not Suggest that the Federal

Circuit Has “Failed to Police” Any

District Court Application of Halo ......

E. Corning Had Notice of Infringement

Since at Least 2003, When the Jury

First Found Corning’s Tapered Ring

Design Infringed the ’194 Patent ........

II. Instructing the Jury that a Finding of

Recklessness Can Support Willfulness

Aligns with Halo and Does Not Warrant

Certiorari Review......................................

CONCLUSION ....................................................

TABLE OF AUTHORITIES

CASES

Page(s)

Aqua Shield v. Inter Pool Cover Team,

774 F.3d 766 (Fed. Cir. 2014) ...................

Bandag, Inc. v. Al Bolser Tire Stores, Inc.,

No. C82-124V, 1985 WL 5702

(W.D. Wash. Oct. 21, 1985).......................

Bombardier Recreational Prods. Inc. v.

Arctic Cat Inc.,

No. 17-1645 ...............................................

Camreta v. Greene,

563 U.S. 692 (2011) ...................................

Corning v. Burden,

56 U.S. 252 (1853) .....................................

Corning Gilbert Inc. v. United States,

896 F. Supp. 2d 1281

(Ct. Int’l Trade 2013) ................................

Datascope Corp. v. SMEC, Inc.,

879 F.2d 820 (Fed. Cir. 1989) ...................

Ericsson Inc. v. TCL Commc’n Tech.

Holdings, Ltd.,

No. 2:15-cv-00011-RSP,

2018 WL 2149736

(E.D. Tex. May 10, 2018) .......................... 21-22

Halo Elecs., Inc. v. Pulse Elecs., Inc.,

136 S. Ct. 1923 (2016) ..............................passim

Imperium IP Holdings (Cayman), Ltd. v.

Samsung Elecs. Co.,

No. 4:14-CV-00371, 2017 WL 1716788

(E.D. Tex. Apr. 27, 2017) ..........................

TABLE OF AUTHORITIES—Continued

Page(s)

Imperium IP Holdings (Cayman), Ltd. v.

Samsung Elecs. Co.,

No. 17-2107 (Fed. Cir. docketed

May 30, 2017) ............................................

Innovention Toys, LLC v. MGA Entm’t,

No. 07-6510, 2017 WL 3206687

(E.D. La. Mar. 8, 2017) .............................

Int’l Mfg. Co. v. Landon, Inc.,

336 F.2d 723 (9th Cir. 1964) .....................

Johns Hopkins Univ. v. CellPro, Inc.,

152 F.3d 1342 (Fed. Cir. 1998) .................

Marvel Specialty Co. v.

Bell Hosiery Mills, Inc.,

386 F.2d 287 (4th Cir. 1967) .....................

Octane Fitness, LLC v.

ICON Health & Fitness, Inc.,

134 S. Ct. 1749 (2014) ...............................

Odetics, Inc. v. Storage Tech. Corp.,

185 F.3d 1259 (Fed. Cir. 1999) .................

Polara Eng’g Inc. v. Campbell Co.,

894 F.3d 1339 (Fed. Cir. 2018) ................. 20, 26

Read Corp. v. Portec Inc.,

970 F.2d 816 (Fed. Cir. 1992) ...................

Safeco Ins. Co. of Am. v. Burr,

551 U.S. 47 (2007) .....................................

In re Seagate Tech., LLC,

497 F.3d 1360 (Fed. Cir. 2007) (en banc) .

vii

TABLE OF AUTHORITIES—Continued

Page(s)

Sw. Tel. & Tel. Co. v. Danaher,

238 U.S. 482 (1915) ...................................

Taylor v. McKeithen,

407 U.S. 191 (1972) ...................................

Universal Athletic Sales Co. v. Am. Gym,

480 F. Supp. 408 (W.D. Pa. 1979) ............

Wahl v. Carrier Mfg. Co.,

511 F.2d 209 (7th Cir. 1975) .....................

WBIP, LLC v. Kohler Co.,

829 F.3d 1317 (Fed. Cir. 2016) ...... 11, 17, 24-25

WesternGeco L.L.C. v.

ION Geophysical Corp.,

837 F.3d 1358 (Fed. Cir. 2016) ........... 19, 21, 30

WesternGeco LLC v.

ION Geophysical Corp.,

138 S. Ct. 2129 (2018) ...............................

Wilden Pump & Eng’g Co. v.

Pressed & Welded Prods. Co.,

655 F.2d 984 (9th Cir. 1981) .....................

STATUTES AND RULES

28 U.S.C. § 1254(1) .......................................

35 U.S.C. § 284 ....................................... 13, 19, 24

35 U.S.C. § 285 .............................................

Fed. Cir. R. 36 ..................................... 1, 13, 25, 26

viii

TABLE OF AUTHORITIES—Continued

OTHER AUTHORITIES

Page(s)

W. Keeton, D. Dobbs, R. Keeton & D. Owen,

Prosser and Keeton on Law of Torts § 34

(5th ed. 1984) ............................................

PwC, 2018 Patent Litigation Study (May

2018), https://www.pwc.com/us/en/forens

ic-services/publications/assets/2018-pwcpatent-litigation-study.pdf .......................

Restatement (Second) of Torts § 500

(Am. Law Inst. 1965) ................................

OPINIONS

The order denying panel rehearing and rehearing en

banc, Pet. App. 3a-4a, is unreported. The panel order

disposing of the case without opinion, Fed. Cir. R. 36,

is not published in the Federal Reporter, but is reprinted

and available at 714 F. App’x 1022 (Fed. Cir. 2018).

The district court’s judgment and its accompanying

opinion on enhanced damages are unreported, Pet.

App. 5a-33a.

JURISDICTION

The U.S. Court of Appeals for the Federal Circuit

entered its judgment on March 13, 2018, and denied

rehearing on May 14, 2018. The jurisdiction of this

Court is invoked under 28 U.S.C. § 1254(1).

INTRODUCTION

Respondent, PPC Broadband, Inc., respectfully submits this brief in opposition to the petition for a writ of

certiorari filed by Corning Optical Communications

RF LLC. Contrary to Corning’s petition, the district

court considered the totality of the evidence in

enhancing damages, including the overwhelming

evidence of Corning’s presuit copying and concealment, and properly exercised its discretion to double,

rather than triple, the damages based on Corning’s

willful and egregious infringement.

Corning was found to infringe PPC’s patented cableconnector design not just once, but twice. After the

first verdict in 2003, Corning redesigned its cable

connectors to have a different, noninfringing design.

But Corning’s redesigned connectors failed in the

marketplace, so Corning again copied PPC’s patented

design, secretly reverted back to an infringing design,

and concealed that infringing design for years.

After PPC discovered that Corning had started

infringing again, it brought this suit, which resulted

in a jury verdict in 2015 that Corning had infringed,

again. The jury heard Corning’s argument for noninfringement, including its reliance on a decision from

the Court of International Trade (CIT). Despite

Corning’s argument, and considering the totality of

the evidence, the jury found not only that Corning

infringed, but also that its infringement was willful.

In its petition, Corning does not challenge the jury’s

findings of infringement or willfulness. Instead, it

challenges the district court’s exercise of discretion to

double the damages award based on the egregiousness

of Corning’s conduct. But Corning has failed to identify either an abuse of discretion by the district court,

or an error by the Federal Circuit in reviewing that

exercise of discretion, that warrants this Court’s review.

As this Court explained in Halo Electronics, Inc. v.

Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), objective reasonableness cannot be dispositive of the issue

of willfulness and enhanced damages. Corning nevertheless argues that objective reasonableness—as it

alleges was shown by the CIT’s decision—totally

absolves its egregious conduct here and prevents any

award of enhanced damages. Not only does Corning’s

argument run counter to Halo, but it is also wrong on

the underlying facts in this case.

The district court considered the objective reasonableness of Corning’s defenses when exercising its

discretion to enhance damages and concluded that

“the case was not particularly close.” Pet. App. 23a.

Further, it considered the totality of the evidence,

including not only Corning’s presuit copying and

concealment, but also the CIT’s decision, which is the

linchpin of Corning’s argument. The court heard all

the reasons why the CIT’s decision deserved little

weight, and Corning has offered no reason why that

decision deserved more weight than it received, let

alone the dispositive weight Corning argues for here.

By statute, the district court had the authority to

triple the damages based on Corning’s egregious conduct, but in this case, it exercised its discretion to only

double it. The Federal Circuit found no abuse of discretion by the district court and affirmed the judgment

without an opinion. Nothing in the district court’s

exercise of discretion, or the Federal Circuit’s decision

to affirm, warrants this Court’s review.

In the end, Corning is seeking review of a highly

discretionary decision to award enhanced damages for

Corning’s (uncontested) willful infringement. Corning’s

petition seeks to have the lower courts reweigh the

factors for enhancement, giving more weight to the

extraordinary facts and circumstances of the CIT’s

decision that actually support the district court’s

enhancement decision. But there is no reason to

believe that the enhancement decision would be any

different because the district court already considered

the facts and circumstances of the CIT’s decision and

found them to be unpersuasive. And to the extent that

Corning argues that the lower courts should give the

CIT’s decision dispositive weight as evidence of objective reasonableness, and disregard all the extraordinary

facts and circumstances of that decision that support

the district court’s decision to find it unpersuasive,

that argument was expressly rejected only two years

ago in Halo. The petition should be denied.

STATEMENT OF THE CASE

I. PPC’s Inventions

PPC owns market-changing patents that cover its

coaxial cable connectors, including U.S. Patent No.

6,558,194 (’194 patent). One key feature of the ’194

patent is its cable connector having an inwardly tapered

compression ring. See Fed. Cir. JA10113:18-10114:2.

When the compression ring slides over the body of the

connector, the tapered portion of the ring causes a

portion of the connector’s body member to deform

inwardly and clamp around the cable; this in turn

creates a sealing fit irrespective of cable size. See, e.g.,

’194 patent at 7:34-49, 8:39-47, 13:20-14:7.

Accordingly, the ’194 patent describes a universal

connector that can be used on a variety of cable types

and sizes. Id. at 8:54-60. This innovation was a

monumental commercial success and inspired copying

by multiple competitors, including Corning.

II. Corning’s Infringing Conduct

Twice, the courts have found that Corning infringed

PPC’s ’194 patent. The first time, in 2003, a jury found

that several Corning UltraSeal connectors had an

inwardly tapered compression ring and infringed the

’194 patent. Pet. App. 7a. Following that finding,

Corning agreed to withdraw its infringing connectors

from the market. Fed. Cir. JA12527. At no point did

PPC grant Corning a license to the ’194 patent. Id.

In 2004, Corning launched a new connector called

the UltraRange. Pet. App 7a. The UltraRange connector differed from the infringing UltraSeal connector

in that it used a “square-back can” design, instead of

PPC’s patented inwardly tapered compression ring

design. Fed. Cir. JA10971:17-10972:1, JA10983:25-

10984:7. Rather than deform a body member inwardly

around the cable, the “square-back can” compression

ring moved together with a portion of the body member

to push it in the axial direction. Later that same year,

PPC acquired and evaluated an UltraRange connector

with the square-back can design and concluded that it

did not infringe. Pet. App. 8a. Corning emphasized the

noninfringing square-back can design in its marketing

materials for this new connector.

But the UltraRange connector with the square-back

can design failed in the market, so Corning redesigned

it in 2005. Fed. Cir. JA10984. The redesign replaced

the square-back can design with an inwardly tapered

compression ring—the same design found to infringe

the ’194 patent in 2003. Fed. Cir. JA10992:3-18

(it works “the same way as the compression ring on

the connectors that were found to have infringed”),

JA10983:25-10984:20, JA10115-10119; Pet. App. 8a.

Moreover, Corning’s lead designer for the redesign,

Donald Burris, participated in the first trial on the

UltraSeal connector, and knew that the inwardly

tapered compression ring design had been found to

infringe. Fed. Cir. JA10984:8-20.

Corning’s designer, Mr. Burris, explained that the

new features fell “inside the connector and would [not]

be noticeable,” and were “invisible” to the consumer.

Pet. App. 8a (alteration in original) (citation omitted).

Corning never explained or advertised this change to

the public. Pet. App. 8a-9a. At no point did Corning

change the appearance of its connector models, the

descriptions in marketing materials, or the model or

series numbers. Pet. App. 8a. Nor did Corning inform

PPC of the new redesign. See Pet. App. 8a-9a. Instead,

Corning continued to falsely portray the UltraRange

connector as using the old 2004 square-back can

design. Pet. App. 9a; see, e.g., Pet. App. 14a (stating

that “Corning’s conduct indicated to PPC that the

UltraRange product did not change” in 2005).

Several years later, PPC learned of Corning’s deception. In 2011, Corning expanded its offerings to include

its new UltraShield connector. Pet. App. 9a. PPC

acquired and analyzed this design and discovered that

it similarly used an inwardly tapered compression

ring found to infringe in 2003. Fed. Cir. JA1011310116, JA10257. In light of this, PPC decided to take

another look at the UltraRange redesign and was

surprised to find that it was also using the infringing

inwardly tapered ring. E.g., Pet. App. 9a, 15a. PPC

filed a series of actions to end Corning’s deceptive,

infringing conduct.

III. The CIT Action

In April 2011, PPC asked U.S. Customs to prevent

Corning from importing its UltraShield and UltraRange

connectors, pursuant to an earlier exclusion order.

Fed. Cir. JA2390, JA1493. Customs concluded that the

UltraShield and UltraRange connectors contained a

body member that deformed inwardly from contact

with an inwardly tapered compression ring and thus

barred their importation. Fed. Cir. JA2406-2407.

Corning appealed to the CIT from that Customs’

determination. PPC tried to intervene, but Corning

filed an objection and kept PPC from participating.

Only Corning and the U.S. government could submit

briefs and expert reports. See Fed. Cir. JA10586:910587:4, JA2540-2541. This led to a one-sided and

biased record because only Corning filed reports on

infringement and claim construction. Although the

government’s expert, Dr. Robert Mroczkowski, opined

in a draft report that Corning’s connectors infringed

one of the claim elements of PPC’s ’194 patent,

the government did not submit that report of

infringement to the CIT. Fed. Cir. JA10702:2-8,

JA10705:19-10706:5.1

With only Corning’s reports before it, and without

PPC being able to explain why Corning’s arguments

were wrong, the CIT adopted Corning’s construction

for the claim term “cylindrical body member.” See

Corning Gilbert Inc. v. United States, 896 F. Supp. 2d

1281, 1292-94 (Ct. Int’l Trade 2013). Even though

Corning places great weight on the CIT decision now,

the CIT issued its claim construction three months

after the district court had thoroughly rejected Corning’s

proposed construction. Not only did the CIT’s construction conflict with the district court’s earlier

ruling, but it also imported limitations from the

specification and elevated the extrinsic evidence

over the intrinsic, contrary to basic principles of

claim construction and well-settled precedent that

Corning does not challenge in its petition. Id.; see also

infra Section IV. Based on its fundamentally flawed

claim construction, the CIT found that the UltraShield

and UltraRange connectors did not infringe the

’194 patent. See Corning Gilbert, 896 F. Supp. 2d at

1294-97.

IV. The New York Action

In 2011, PPC filed suit in the Northern District of

New York asserting infringement of the ’194 patent

and U.S. Patent No. 6,848,940 (the ’940 patent), a

continuation of the ’194 patent that was not at issue

in the CIT case. Corning did not dispute that the

Corning later retained the same infringement expert that the

government had retained in the CIT case, Dr. Mroczkowski, to

testify on its behalf in this case.

UltraShield and UltraRange connectors have an

inwardly tapered compression ring, but rather bootstrapped its noninfringement position to the same

construction of “cylindrical body member” that it

proposed to the CIT. In particular, Corning advocated

for a construction that would limit the claim term

“body member” to a single piece, and then argued that

it did not infringe because it used a two-piece design.

To support its noninfringement position, Corning

retained the same expert, Dr. Mroczkowski, that the

government had retained in the CIT case. This time,

however, instead of offering an opinion that Corning

infringed PPC’s ’194 patent, as he had done in his

draft report for the government in the CIT case,

Dr. Mroczkowski said the opposite—that Corning did

not infringe.

In September 2012, the magistrate judge issued a

report rejecting Corning’s attempt to limit the “body

member” claim terms in PPC’s patents to a singlepiece design, finding lack of support in the patents

themselves or the rest of the intrinsic record. Fed. Cir.

JA1422-1426. Rather than provide an express construction, the magistrate judge concluded that the plain

and ordinary meaning of the terms would suffice. Id.

In its ruling, the magistrate judge explained that

the plain and ordinary meaning was not a single-piece

design. Rather, while the embodiments in PPC’s patents

depicted the body member as a single component,

there was “no strong indication from the specifications

or prosecution histories with those two patents of any

intention on the part of the patentee to narrow the

scope of the claim term to be more restrictive than

would otherwise prevail when applying the ordinary

and customary meaning of the term ‘member.’” Fed.

Cir. JA1425 (emphases added). The magistrate judge

continued: “the specifications and embodiments of the

two patents reflect the patentee’s acknowledgement

that a ‘member’ can consist of separate components.”

Id. Thus, according to the magistrate judge, “[t]his

plainly reflects the inventor’s understanding that

separate components can be used together to comprise

a body member.” Id. The district court judge adopted

the magistrate judge’s entire report in November

2012, Fed. Cir. JA62, months before the CIT issued

its decision.

Despite the district court already telling Corning

that the “body member” claim terms were not limited

to one piece, Corning refused to abandon its position

and, under the guise of plain and ordinary meaning,

maintained its argument that a two-piece body member did not infringe. Fed. Cir. JA2569, JA1618-1621.

Recognizing the need for the court, not the jury, to

resolve claim-construction disputes, the district court

clarified its plain-and-ordinary-meaning construction

by incorporating the conclusions from its 2012 Order

into the construction. Fed. Cir. JA12000. Contrary to

what Corning now contends, the court’s clarification

before trial was neither new nor a surprise to

Corning. The parties proceeded to trial on the issues of

Corning’s infringement, willfulness, and damages. At

trial, Corning’s expert, Dr. Mroczkowski, admitted

that he had provided an opinion of infringement for

the government in the CIT case, but the government

never submitted his report. Fed. Cir. JA10702:2-8,

JA10705:19-10706:5.

The district court gave the jury instructions on

willfulness, and specifically instructed the jury to

consider, among other factors, the CIT’s decision. Fed.

Cir. JA10896-10987, JA10584-10588, JA10896-10897,

JA269-272. Among the evidence the jury considered

was the fact that Corning knew that its own expert

had opined in his draft report in the CIT case

that Corning infringed PPC’s ’194 patent, Fed. Cir.

JA10702:2-8, JA10705:19-10706:5, but then offered

the opposite opinion to the jury here. It was therefore

not surprising that the jury rejected each of Corning’s

arguments, including its reliance on the CIT’s decision, finding that Corning’s infringement was willful,

and awarding PPC $23.85 million in damages. Fed.

Cir. JA269-272, JA53-54.

After the jury trial, Corning moved for judgment as

a matter of law on willful infringement. It specifically

argued that the 2013 CIT decision showed its infringement was not “objectively unreasonable” and the district

court should enter judgment of no willfulness “for this

reason alone.” Dkt. No. 410 at 4-6. At the time of

Corning’s motion, Halo was pending at the Supreme

Court. The district court waited several months for

Halo and issued its decision thereafter, rejecting

Corning’s argument of objective reasonableness for

willfulness, but noting that it could be considered for

enhanced damages:

Corning argues that a number of defenses

preclude a finding of willful infringement.

While such meritorious defenses no longer

guarantee an alleged infringer can overcome

a willfulness finding, they are nevertheless

relevant to “the particular circumstances of

[a] case in deciding whether to award damages, and in what amount.”2

Dkt. No. 446 at 18 (alteration in original) (citations

omitted).

Corning does not contest the finding of willful infringement

in its petition.

The district court then held an extensive bench trial

to address several equitable defenses and whether an

enhancement of the damages award was appropriate.

The court rejected Corning’s equitable defenses. Pet.

App. 10a-17a. Then, applying guidance from the Court

in Halo and Read Corp. v. Portec Inc., 970 F.2d 816

(Fed. Cir. 1992), it found enhancement appropriate

and doubled the damages.3 Pet. App. 17a-26a.

In addition to finding that several factors, such as

the decades-long duration of Corning’s conduct, weighed

in favor of enhanced damages, the court found persuasive the evidence of deliberate copying, concealment,

and the absence of any reasonable noninfringement

positions. Pet. App. 17a-26a.

First, the court found that Corning deliberately

copied PPC’s patents. Pet. App. 18a-19a. For instance,

it reasoned that Corning “deliberately copied” the ’194

patent because it knew the tapered design infringed

after the 2003 UltraSeal litigation, but nonetheless

incorporated the tapered design into both the

UltraShield and redesigned UltraRange connectors.

Pet. App. 19a; see Pet. App. 25a (noting that “[t]his

evidence demonstrates that Corning would rather

knowingly infringe than invest the time and resources

to redesign”).

The district court also found that Corning made a

concerted effort to conceal its infringing conduct.

See Pet. App. 25a-26a. As the court found, adding

an “invisible” change to its product, while continuing

to market and identify the redesigned UltraRange

“in the same way as the [old] 2004 version,” was

Courts continue to apply the Read factors after Halo to assess

whether enhancement is appropriate. See, e.g., WBIP, LLC v.

Kohler Co., 829 F.3d 1317, 1325, 1339-42 (Fed. Cir. 2016).

concealment justifying enhanced damages. Pet. App.

26a (citation omitted).

Further, the court found that Corning did not have

a “good faith belief in its noninfringement defense.”

Pet. App. 21a. It reasoned that, even though Corning

sought advice for and compared the 2004 UltraRange

connector to PPC’s patent claims, it did not analyze

the redesigned UltraRange once it added the tapered

ring. Pet. App. 20a.

Similarly, the court considered the 2013 CIT decision, which only involved one of the two PPC patents

at issue in this case, again, as it had for willful

infringement, but found it was not persuasive because

it issued years after Corning learned of the patents

and PPC’s positions. See Pet. App. 21a. The court had

also heard the extraordinary testimony from Corning’s

expert, Dr. Mroczkowski, that he had provided an

opinion of infringement for the government in the CIT

case, and then testified the opposite way to the jury

here, further undermining Corning’s reliance on the

CIT’s decision. In light of all these circumstances, the

court found that the decision failed to ameliorate

Corning’s purposeful conduct or provide a good-faith

belief of noninfringement. Pet. App. 21a.

As it said it would in its decision on willfulness,

Dkt. No. 446 at 18, the district court considered

the objective reasonableness of Corning’s positions.

Having heard all of Corning’s arguments, it found that

“the case was not particularly close.” Pet. App. 23a.

Thus, considering the totality of the evidence, the court

found that Corning’s “egregious infringement behavior”

warranted enhanced damages, and exercised discretion to double, rather than triple, the award, raising

the total to $47.7 million. Pet. App. 17a-26a.

V. The Federal Circuit

Corning appealed from the district court’s judgment

and, after briefing and oral argument, the Federal

Circuit summarily affirmed under Fed. Cir. Rule 36

without an opinion. Pet. App. 1a-2a.

REASONS FOR DENYING THE PETITION

I. The District Court’s Discretionary Determination to Award Enhanced Damages Does

Not Warrant Further Review

Section 284 commits to a district court’s discretion

the decision to enhance damages. 35 U.S.C. § 284. In

re Seagate defined the boundaries of that discretion

with a two-part test requiring subjective willfulness

and a finding of objective recklessness before a

court could enhance a damages award. In re Seagate

Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc).

This Court did away with the Seagate test in 2016,

stating that the “subjective willfulness of a patent

infringer . . . may warrant enhanced damages,” but

the “ability of the infringer to muster a reasonable

(even though unsuccessful) defense” is not dispositive.

Halo, 136 S. Ct. at 1933. In overruling Seagate, the

Court in Halo gave flexibility to the trial courts to

“punish the full range of culpable behavior.” See id. at

1933-34 (district courts are “free from the inelastic

constraints” of Seagate’s two-part test). Corning’s

petition seeks a return to Seagate’s objective-reasonableness standard.

Enhanced damages may be awarded in “egregious

cases of culpable behavior.” Id. at 1932. In deciding

whether to enhance, the courts should “take into

account the particular circumstances of each case”—a

totality-of-the-circumstances approach. Id. at 1933.

“Conduct warranting enhanced damages” may include

“willful, wanton, malicious, bad-faith, deliberate,

consciously wrongful, flagrant, or [even conduct]

characteristic of a pirate.” Id. at 1932.

The issue presented in Corning’s petition is a

narrow one. Pet. 12-33. Corning does not challenge

either the jury’s finding of willful infringement or the

damages award. Id. Corning asserts only that the

district court erred in enhancing the damages award

because it allegedly “chose to ignore powerful evidence

that Corning’s conduct was objectively reasonable” in

making that decision. See, e.g., Pet. 13.

It is Corning that has ignored the evidence. For

instance, it ignores that the district court expressly

said that it would consider the reasonableness of

Corning’s positions, Dkt. No. 446 at 18, yet concluded

that “the case was not particularly close.” Pet. App.

23a. It also ignores that (1) the district court addressed

the CIT’s decision, and (2) found it unpersuasive.

Pet. App. 21a. If this Court were to grant Corning’s

petition, it would discover that the facts are not as

Corning presents them.

To the extent that Corning contests the weight given

to the CIT’s decision, that argument runs directly

afoul of Halo, which made clear that any rule requiring courts to defer to objectively reasonable positions

“encumbers the statutory grant of discretion to district

courts.” See, e.g., Halo, 136 S. Ct. at 1932 (citation

omitted). Enhancement is assessed on a case-by-case

basis. A different court’s infringement analysis may be

considered, as the district court did here, but under

Halo, it is not dispositive.

A. The District Court Considered the 2013

CIT Decision and Found It Unpersuasive

Corning contends that certiorari should be granted

because the court below allegedly embraced the approach

of a “growing number of district courts” to “ignore

evidence of objective reasonableness.” Pet. 20-24. This

contention not only attempts to portray a problem that

does not exist, but it also ignores the detailed analysis

and clear findings of the district court regarding

Corning’s purported evidence of objective reasonableness. E.g., Pet. App. 21a.

In its petition, Corning argues throughout that

the district court “expressly . . . ignore[d]” the CIT’s

decision. Pet. 13, 20-24. Since the court expressly

considered the CIT’s decision, Pet. App. 21a, this argument is apparently premised on the court’s statement

that Corning’s reliance on the decision was “misplaced.”

Id. But by saying that such reliance was “misplaced,”

the court did not say that the 2013 CIT decision was

ignored—it simply said that it was not persuasive. In

reality, the court considered the CIT’s decision and

found that it failed to show Corning’s conduct was in

fact reasonable in light of all the evidence.

Indeed, in considering whether to enhance damages,

the court stated that it considered “all the facts and

circumstances” before it. Pet. App. 26a (emphasis

added). It assessed Corning’s infringement, copying,

concealment, and alleged “good faith” belief of noninfringement. Pet. App. 18a-19a, 25a-26a. To assess

Corning’s alleged good faith, the court examined

several factors, and ended by squarely addressing the

2013 CIT decision. Pet. App. 21a. It stated that

“reliance on the 2013 [CIT] opinion is misplaced,” at

least because it manifested “years after Corning knew

of both PPC’s [’194 and ’940] patents and infringement

allegations.” Pet. App. 21a.

Thus, the district court did not “ignore[]” the 2013

CIT decision, but considered whether it could in fact

contribute to a reasonable noninfringement position.

As it failed to do so, the court found the CIT’s decision

did not weigh against enhanced damages. Pet. App.

21a. The court’s finding on persuasive value is supported

by the record: the CIT’s decision could not justify

Corning’s conduct. Not only did the opinion issue years

after Corning’s infringement began in 2005, but it also

relied on a one-sided, biased, and deficient record.

After Corning was found to infringe in 2003, it was

well aware that an inwardly tapered compression ring

in its connectors would infringe PPC’s ’194 patent. Pet.

App. 7a. This understanding first led Corning to stop

selling its infringing products with the tapered compression ring, and then later motivated Corning, at

least in part, to keep the tapered ring design in its

current connectors a secret. See Pet. App. 14a-15a,

25a-26a. An isolated 2013 CIT decision cannot excuse

Corning’s decade-long bad behavior.

What’s more, the CIT record was biased and therefore

could not provide a reasonable belief of noninfringement or evidence of objective reasonableness. PPC

could not participate in the CIT, and the U.S. government did not offer any expert reports to argue in favor

of infringement. The CIT had only Corning’s materials

before it, which persuaded that court to improperly

limit the claims to just one example in the specification, contrary to basic claim-construction principles,

especially when the intrinsic evidence teaches against

it. The 2013 CIT decision, on such a record, does

not support Corning’s arguments as “objectively

reasonable.” Cf. Pet. 12-14.

Further, before the CIT issued its opinion, the

district court here had already rejected the construction Corning was advocating to the CIT, a point

Corning fails to acknowledge in its petition. Fed. Cir.

JA1422-1426, JA62. Even if the CIT’s decision were

based on a fully and fairly developed record, Corning

still could not expect that the arguments it made to the

CIT would succeed in the district court. See Aqua

Shield v. Inter Pool Cover Team, 774 F.3d 766, 774

(Fed. Cir. 2014).

And then there is the extraordinary testimony

from Corning’s expert, Dr. Mroczkowski. He admitted

that he had provided an opinion of infringement for

the government in the CIT case, and then testified

the opposite way to the jury here. Knowing that

Dr. Mroczkowski previously held the exact opposite

view on infringement, Corning could not have reasonably relied on the CIT’s decision to form a good-faith

belief of noninfringement.

As this Court explained in Halo, “culpability is

generally measured against the knowledge of the actor

at the time of the challenged conduct.” Halo, 136 S. Ct.

at 1933. Corning’s willful conduct began in 2005. Fed.

Cir. JA44. The 2013 CIT decision does not excuse its

decade-long infringement. Halo, 136 S. Ct. at 1933.

The court’s appreciation of this does not undermine

its enhancement, but rather brings it squarely into

agreement with this Court’s teachings in Halo. Corning

“cannot insulate itself from liability” by conjuring up

an incredible defense “after engaging in the culpable

conduct of copying, or ‘plundering’” PPC’s technology

for years. See WBIP, 829 F.3d at 1325, 1340-41

(quoting Halo, 136 S. Ct. at 1933).

In addition to the plain facts failing to support

Corning’s position, the caselaw fails to support that

position as well. Pet. 14-17. The cases Corning relies

on only suggest that evidence of “reasonable” conduct

may be relevant—they do not expressly state that

every court must consider it to be dispositive. Nor do

they state that such evidence must be determinative.

In each case, the court considered the evidence as part

of the larger inquiry regarding the totality of the

evidence.

The “historical practice” Corning relies on also has

no bearing on the current factual situation—namely,

where a different tribunal found no infringement on a

different (and deficient) record. The first set of cases

provides examples where a patent was found valid

by another tribunal and that finding, in turn, was

considered for enhancement. Pet. 14-16.4 These cases

do not establish that a court must consider the

noninfringement finding of another court, made on a

different record, to be dispositive when considering

enhancement.

The second set of cases Corning relies on is also

inapposite. Corning provides a few examples where

one tribunal reversed its course (noninfringement

to infringement), in light of the same record, and

considered that course correction when assessing

enhancement. Pet. 16-17.5 But those cases do not

establish the relevance of—much less make dispositive—

See, e.g., Int’l Mfg. Co. v. Landon, Inc., 336 F.2d 723 (9th

Cir. 1964); Wilden Pump & Eng’g Co. v. Pressed & Welded Prods.

Co., 655 F.2d 984 (9th Cir. 1981); Wahl v. Carrier Mfg. Co., 511

F.2d 209 (7th Cir. 1975).

See, e.g., Marvel Specialty Co. v. Bell Hosiery Mills, Inc., 386

F.2d 287 (4th Cir. 1967); Universal Athletic Sales Co. v. Am. Gym,

480 F. Supp. 408 (W.D. Pa. 1979); Bandag, Inc. v. Al Bolser Tire

Stores, Inc., No. C82-124V, 1985 WL 5702 (W.D. Wash. Oct. 21,

1985).

a noninfringement finding made by a different tribunal on a different record. Rather, these cases merely

reinforce the fact-intensive nature of the inquiry.

Ultimately, the supposed “historical practice” relied

on by Corning does not mandate that the courts must

always consider decisions, like the 2013 CIT decision

here, to be dispositive. The district court considered all

the evidence of record, including the 2013 CIT decision

and its underlying facts and circumstances. This

aligns with the Court’s instruction in Halo that courts

should continue “to take into account the particular

circumstances of each case,” and that “someone who

plunders a patent . . . [should not be able to avoid]

comeuppance under § 284” based on attorney argument. Halo, 136 S. Ct. at 1933-34. The court’s

discretionary, fact-specific decision to enhance damages

does not warrant review.

B. There Is No Trend of Courts Ignoring

Evidence of Objective Reasonableness

Despite Corning’s rhetoric, there is not a “growing

and troubling trend” of courts ignoring evidence of

objective reasonableness. Pet. 20-24. There is certainly

no such trend in the Federal Circuit. In WesternGeco

L.L.C. v. ION Geophysical Corp., 837 F.3d 1358 (Fed.

Cir. 2016), on remand from this Court after Halo, the

Federal Circuit expressly held that “the objective

reasonableness of the accused infringer’s positions can

still be relevant for the district court to consider when

exercising its discretion” to enhance damages. Id. at

1363. The Federal Circuit instructed that “objective

reasonableness is one of the relevant factors” that

courts may consider in taking into account the

particular circumstances of each case. Id.6

In this case, Corning argues that the district

court should have weighed the evidence differently,

even though the Federal Circuit affirmed without an

opinion. But as shown above, the district court did

consider objective reasonableness in awarding only

double damages, and that argument alone should not

warrant granting certiorari in this case based on the

totality of the evidence, including the overwhelming

evidence of Corning’s egregious conduct.7

The district court cases Corning cites also do not

establish a “growing and troubling trend.” Pet. 20-24.

These district court cases are not binding precedent,

This Court reversed WesternGeco on other grounds. WesternGeco

LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018). While

amicus Samsung acknowledges WesternGeco’s clear statement

that “district courts should at least consider objective reasonableness in determining whether to award enhanced damages,”

Samsung Br. 6, it does not explain why this case, where there was

no opinion by the Federal Circuit, should be of any concern since

it said nothing to the contrary. Samsung’s real concern, of course,

is its own case pending in the Federal Circuit, Imperium IP

Holdings (Cayman), Ltd. v. Samsung Elecs. Co., No. 17-2107

(Fed. Cir. docketed May 30, 2017), which has very different facts

and where the district court awarded treble damages.

Likewise, amici’s concerns that the lower courts are not

consistently considering objective reasonableness, Samsung Br.

21-23; Askeladden Br. 5-8, should not warrant granting certiorari

in this case. The Federal Circuit has already instructed the

district courts to consider objective reasonableness as one of the

factors for enhancement, which the district court did here. If the

district courts fail to apply the law correctly, the Federal Circuit

can step in, as it has already. See Polara Eng’g Inc. v. Campbell

Co., 894 F.3d 1339, 1355-56 (Fed. Cir. 2018) (remanding for

failure to explain why objective reasonableness did not mitigate

against enhancement).

Camreta v. Greene, 563 U.S. 692, 709 n.7 (2011) (“A

decision of a federal district court judge is not binding

precedent in either a different judicial district, the

same judicial district, or even upon the same judge in

a different case.” (citation omitted)), and are irrelevant

where the Federal Circuit has clearly spoken in

WesternGeco. If the cases state the law incorrectly or

are inconsistent with WesternGeco, that is an issue for

the Federal Circuit to deal with first—not this Court.

What’s more, on closer inspection, in no case that

Corning raises did the district courts ignore evidence

showing objective reasonableness. For instance, in

Imperium IP Holdings (Cayman), Ltd. v. Samsung

Electronics Co., the district court said that Halo did

not expressly require a court to consider the evidence

of objective reasonableness when enhancing damages.

No. 4:14-CV-00371, 2017 WL 1716788, at *3-4 (E.D.

Tex. Apr. 27, 2017). And that is true—Halo does not

limit the evidence a court must consider. Rather, it

set forth a broad prescription for the courts to assess

the “circumstances of each case.” Halo, 136 S. Ct. at

1933. Nevertheless, the Imperium court “examined

the objective reasonableness of Defendants’ positions.”

2017 WL 1716788, at *4. The mere fact that the court

was not persuaded does not demonstrate a “growing

and troubling trend.” Pet. 22.

Similarly, in Ericsson Inc. v. TCL Communication

Technology Holdings, Ltd., the court considered the

Patent Trial and Appeal Board’s decision to institute

an inter partes review, but found that, when coupled

with the other evidence, it did not evidence a party’s

objective reasonableness. No. 2:15-cv-00011-RSP, 2018

WL 2149736, at *11 (E.D. Tex. May 10, 2018). In particular, even though inter partes review was instituted,

the review did not find the patent unpatentable, and

the defendant did not subsequently challenge validity

at trial. Id. at*10 n.4, *11. These facts weighed against

a finding that the case was close, and thus weighed in

favor of enhancement. Id. at *1.

Moreover, in Innovention Toys, LLC v. MGA

Entertainment, the court considered the Federal

Circuit’s finding that a defendant’s invalidity defense

was “reasonable” (even though that finding was subsequently vacated), but found that it could not overcome

the remaining evidence to preclude enhancement. No.

07-6510, 2017 WL 3206687, at *1-2 (E.D. La. Mar. 8,

2017). The court emphasized that Halo had “rejected”

the idea that an objectively reasonable defense could

“preclude[] enhanced damages,” id. at *1, and that

while many factors are informative, the “award need

not rest on any particular factor, and not all relevant

factors need to weigh in favor” of enhancing damages.

See id. at *2 (citation omitted).

Thus, these cases do not establish a “troubling trend”

of courts ignoring evidence. Cf. Pet. 20-24. Rather,

they make clear that the courts may enhance damages

when the circumstances require.8 That the courts

might find certain evidence unpersuasive in specific

factual situations does not demonstrate a disregard for

Halo or warrant this Court’s review.

Amicus Samsung’s suggestion that the lower courts have

wildly overcorrected by going from one end of the spectrum to the

other, Samsung Br. 3, is not borne out by reality. In fact, the

damages multipliers imposed by district courts for willful

infringement have gone down after Halo—from 2.5 times before

Halo to 2.1 times after. See PwC, 2018 Patent Litigation Study 17

(May 2018), https://www.pwc.com/us/en/forensic-services/public

ations/assets/2018-pwc-patent-litigation-study.pdf.

C. Fee-Shifting Cases Do Not Compel Giving

“Substantial Weight” to Certain Evidence;

Indeed, Making an “Objectively Reasonable” Defense Dispositive Contradicts Halo

In arguing that the alleged evidence of objective

reasonableness should be given substantial weight in

light of this Court’s fee-shifting caselaw, Corning

disregards Halo’s direction and ignores fundamental

differences between the attorney-fee inquiry and the

enhanced-damages inquiry. See Pet. 17-20.

Halo says that the enhanced-damages inquiry

should be flexible, with courts having the discretion to

award up to treble damages when conduct proves to be

particularly egregious. The Court noted that “conduct

warranting enhanced damages has been variously

described” across relevant cases “as willful, wanton,

malicious, bad-faith, deliberate, consciously wrongful,

flagrant, or . . . characteristic of a pirate.” Halo, 136 S.

Ct. at 1932 (emphases added). There is no one type of

conduct that, as a matter of course, demands enhanced

damages. Even when a court finds egregious conduct,

it still retains the discretion to deny enhancement. See

id. at 1933 (“Yet none of this is to say that enhanced

damages must follow a finding of egregious misconduct.”). In other words, no evidence is dispositive

and no evidence is expected to carry more weight

than others.

This rationale is repeated throughout Halo, including in rejecting the rigid Seagate test, which made the

ability “to muster a reasonable” defense dispositive.

Id. at 1932-33. The Court stated that the district courts

must “take into account the particular circumstances”

of the case in deciding whether to enhance damages.

Id. at 1933-34. This removed the requirement that

“objective recklessness” had to be proved before

enhancement. See id. Corning is wrong, therefore, that

“substantial weight” must always be given to “objective

reasonableness” when enhancing damages. Pet. 18

(citation omitted).

By invoking the “substantial weight” language from

fee-shifting cases, Corning seeks to reinstate Seagate

and return to the status quo before Halo. Indeed, by

placing such heavy weight on evidence of objective

reasonableness, Corning seeks to insulate the infringer

based “on the strength of his attorney’s ingenuity.” Id.

at 1933. This Court already rejected that notion in Halo.

Moreover, the differences between a fee-shifting

inquiry and an enhanced damages inquiry are based

on the underlying conduct at issue for each. For

instance, the focus in determining whether to award

attorneys’ fees under § 285 is on conduct during the

litigation to determine if the case was litigated in an

“exceptional” manner relative to the norm. 35 U.S.C.

§ 285; Octane Fitness, LLC v. ICON Health & Fitness,

Inc., 134 S. Ct. 1749, 1756 (2014) (focus of inquiry on

unreasonable manner litigated). By contrast, the focus

in determining whether to award enhanced damages

under § 284 is on a wider range of party conduct to

assess “egregious infringement behavior.” Halo, 136 S.

Ct. at 1932. These two inquiries are not the same, and

certiorari review based on the facts and circumstances

in this case is not warranted based on such a

distinction.

D. Corning’s Mischaracterization of WBIP

Does Not Suggest that the Federal Circuit

Has “Failed to Police” Any District Court

Application of Halo

Corning argues that WBIP holds that “an objectively

reasonable litigation defense . . . is irrelevant” to an

enhancement determination. Pet. 25-26. It then

argues that the Federal Circuit should not issue Rule

36 affirmances in cases that involve the determination

of enhanced damages. Pet. 26-28. Neither argument

warrants certiorari review in light of the facts and

circumstances at issue in this case.

The Federal Circuit has never held that a defense is

“irrelevant” to the enhancement determination. At

most, it reasoned in light of Halo that such a defense

is not outcome determinative. That is not a sweeping

change justifying this Court’s review—in fact, it is a

faithful application of Halo.

Applying Halo in WBIP, the Federal Circuit explained

that this Court rejected the Seagate test in favor of a

flexible inquiry that did not “encumber[] the statutory

grant of discretion.” WBIP, 829 F.3d at 1340 (citation

omitted). The court recognized that Halo had abandoned the prior understanding that a reasonable defense

alone could insulate the infringer, and that willfulness

could still be found absent “objective recklessness.”

See id. The Federal Circuit then explained that a

litigation-derived defense might not, as a matter of

course, establish objective reasonableness, in part

because the relevant time period is “at the time of the

challenged conduct.” Id. (citing Halo, 136 S. Ct. at 1933).

With the framework applied to the facts before it,

the Federal Circuit in WBIP held, consistent with Halo,

that a litigation defense was not dispositive, id. at

1340-41, and that the court did not err in finding the

defense was objectively unreasonable because, inter alia,

it arose years after the “plundering” began. Id. Nowhere

did the court ignore any litigation-derived defenses.

Indeed, after WBIP, the Federal Circuit has confirmed the propriety of considering a defense as part

of the totality of the circumstances. In Polara, for

example, the court confirmed that litigation defenses

could be relevant to assessing the “closeness of the

case,” and the ultimate import of any defense is one

factor among the “totality of the circumstances” that

the district courts should evaluate in determining

whether to enhance damages. See, e.g., Polara, 894

F.3d at 1355-56.

The Federal Circuit has “wide latitude” regarding

“whether or how to write opinions,” including Rule 36

affirmances. See Taylor v. McKeithen, 407 U.S. 191,

194 n.4 (1972); Pet. 27. That the Federal Circuit issued

a Rule 36 affirmance in this case does not justify

certiorari review. Instead, it shows that the district

court’s decision to double damages was so clearly not

an abuse of discretion that no opinion was needed.

This is not surprising given the facts at issue in this

case.

There is also no circuit “split” on this issue and it

has been only two years since Halo, which strongly

suggests there is no need for this Court’s intervention.

And even if there were an “issue,” as Corning contends, Pet. 27-28, that issue should be allowed to

percolate at the Federal Circuit before being considered by this Court again.

E. Corning Had Notice of Infringement Since

at Least 2003, When the Jury First Found

Corning’s Tapered Ring Design Infringed

the ’194 Patent

Corning also argues that the court’s enhanced

damages award “conflicts with this Court’s decisions

holding that enhanced damages require reasonable

notice that the punished conduct was unlawful.” Pet.

28-32. But Corning had notice of infringement since at

least the 2003 trial when it was first found to infringe

PPC’s ’194 patent.

Corning’s suggestion that “there [was] no prior

decision ‘holding or indicating that [Corning’s conduct]

was unreasonable’” contradicts the facts. Pet. 29 (alteration in original) (citation omitted). Corning was found

to infringe in 2003, when the jury found several

Corning UltraSeal models had the inwardly tapered

compression ring from PPC’s ’194 patent. Pet. App. 7a.

Following that finding, Corning agreed to stop selling

its infringing connectors and introduced its “squareback can” design. Id. Corning had clear knowledge of

its infringing conduct. This is a “prior decision” highlighting the unreasonableness of Corning’s alleged

later-developed belief of noninfringement.

Moreover, despite knowing its tapered design was

infringing, Corning nevertheless revived that design

when its “square-back can” design failed in the

market. Pet. App. 8a. It made a conscious decision to

ignore a prior infringement determination, and aware

of that, sought to avoid being caught by making the

“invisible” change in secret. Pet. App. 13a-14a. Corning

sold the UltraRange connectors until 2015 and the

UltraShield connectors from 2011 until 2015. In light

of this record, Corning cannot reasonably contend that

it lacked notice of infringement.

With respect to notice, Corning reiterates its belief

that the court erred by not considering the CIT’s

decision, Pet. 30-31, but as discussed above, the court

fully considered the CIT’s decision and found it unpersuasive. Pet. App. 21a. This finding was supported by

the evidence, including a one-sided record and issuance

years after the infringing conduct began. The CIT’s

decision does not make up for the years of Corning’s

infringing conduct. Cf. Pet. 30-31. And it does not

undermine what the otherwise clear record establishes: Corning had reasonable notice.

Further, it has been well established that an

infringer’s reliance on a judicial opinion issued years

after it began infringing does not excuse otherwise

willful infringement. In Odetics, Inc. v. Storage

Technology Corp., 185 F.3d 1259 (Fed. Cir. 1999), for

example, the Federal Circuit upheld the exclusion of

an invalidity defense that the infringer had won in a

first jury trial, but was later reversed because “[t]he

proper time to assess willfulness is at the time the

infringer received notice, making the relevance of later

developments, such as the assertion of the ‘102(g)

defense’ and the first jury verdict, questionable at

best.” Id. at 1276 (citation omitted); see also Johns

Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1362-63

(Fed. Cir. 1998) (proper for district court in second

trial to exclude evidence that in first trial a jury

verdict was rendered in favor of the accused infringer

because that verdict “had no bearing upon the

willfulness of [the accused infringer]’s infringement on

the dates it received notice of [the patentee]’s patent

rights”); Datascope Corp. v. SMEC, Inc., 879 F.2d 820,

827-28 (Fed. Cir. 1989). Thus, while the court here

could have excluded the 2013 CIT decision entirely, it

allowed the jury to consider the decision in deciding

willfulness, a finding Corning is no longer challenging.

In sum, there is no conflict with this Court’s

cases. Pet. 28-32. The district court reviewed all

the evidence—the evidence of Corning’s knowing

infringement and the CIT evidence that Corning

maintains showed it had a reasonable belief of

noninfringement in 2013, eight years after it decided

to secretly infringe again in 2005. Corning’s reliance

on cases finding errors in failing to consider all

evidence, Corning v. Burden, 56 U.S. 252 (1853), as

well as errors in deviating from statutory direction, see

Sw. Tel. & Tel. Co. v. Danaher, 238 U.S. 482 (1915), is

misplaced. Pet. 28-31.

II. Instructing the Jury that a Finding of

Recklessness Can Support Willfulness Aligns

with Halo and Does Not Warrant Certiorari

Review

Finally, Corning argues that the district court’s jury

instruction on willfulness conflicts with Halo. The

district court instructed the jury that it could find

willfulness if “Corning actually knew or should have

known that its actions constituted an unjustifiably

high risk of infringement of a valid and enforceable

patent.” Pet. 32-33 (citation omitted). According to

Corning, this instruction allowed the jury to find that

Corning willfully infringed upon a showing of mere

negligence. Id. But Corning is wrong, and this argument does not warrant certiorari review.9

As an initial matter, nothing about the jury instruction invokes a negligence standard. The language

“should have . . . known” does not relate to negligence,

but rather to recklessness. See Halo, 136 S. Ct. at 1933

(quoting Safeco Ins. Co. of Am. v. Burr, 551 U.S. 47,

69 (2007) (reckless if the person acts “knowing or

having reason to know of facts”)). As this Court and

other relevant authority provide, reckless behavior

occurs in spite of “a known or obvious risk that was so

great.” W. Keeton, D. Dobbs, R. Keeton & D. Owen,

Prosser and Keeton on Law of Torts § 34, at 213 (5th

ed. 1984) (emphasis added); Restatement (Second) of

Torts § 500, at 587 (Am. Law Inst. 1965); Safeco, 551

As Corning acknowledges, it did not challenge this instruction below. Pet. 33 n.2.

U.S. at 69. Thus, the plain language of the instruction

itself shows that the district court did not impose a

negligence standard, instead of recklessness.

To the extent that Corning now challenges the jury

instructions on the basis of recklessness, that disregards this Court’s guidance in Halo that recklessness

is sufficient to support a finding of willfulness. Halo

136 S. Ct. at 1933-34. In Halo, this Court stated that

analyzing the subjective willfulness of an infringer

looks at whether his conduct is “intentional or knowing.” Id. at 1933. To that end, it explained that

“culpability is generally measured against the knowledge of the actor,” and intent is understood to “denote[

the] state of mind” when the actor “desires to cause

consequences of his act” or “believes” them “substantially certain to result from it.” Id. (emphasis added)

(citations omitted). Recklessness, therefore, can support

a willfulness finding.

Likewise, the Federal Circuit has continued to find

that evidence of recklessness supports willfulness. In

WesternGeco, referring to Halo, the Federal Circuit

stated that “proof that the defendant acted despite a

risk of infringement that was ‘either known or so

obvious that it should have been known’” can support

a willful-infringement finding. WesternGeco, 837 F.3d

at 1362 (quoting Halo, 136 S. Ct. at 1930).

It is not inconsistent with either Halo, or Federal

Circuit precedent applying Halo, for the district court

to have told the jury that willfulness can be appropriate upon showing that “Corning actually knew or

should have known that its actions constituted an

unjustifiably high risk of infringement.” Pet. 32.

Corning does not identify a legal error or inconsistency

warranting certiorari review.

In the alternative, Corning requests that the Court

hold its petition in abeyance until it resolves the

petition in Bombardier Recreational Products Inc. v.

Arctic Cat Inc., No. 17-1645. Pet. 32-33. Corning’s

request is moot, however, because this Court has already

denied Bombardier’s petition on October 1, 2018, and

should similarly deny Corning’s petition as well.

CONCLUSION

For these reasons, Corning’s petition for a writ of

certiorari should be denied.

Respectfully submitted,

J. MICHAEL JAKES

Counsel of Record

FINNEGAN, HENDERSON,

FARABOW GARRETT &

DUNNER, LLP

901 New York Avenue, NW

Washington, DC 20001-4413

(202) 408-4000

mike.jakes@finnegan.com

Counsel for Respondent

November 5, 2018

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.