80 F.3d 1566

COWEN, Senior Circuit Judge,
dissenting.
I respectfully dissent because, in my opinion, the decision of the majority is plainly contrary to Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555 (Fed.Cir.1992), and Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538 (Fed.Cir.1990), cert. denied, 500 U.S. 918, 111 S.Ct. 2017, 114 L.Ed.2d 103 (1991). Modine is directly on point. At the trial level in that case, the jury found willful infringement. Modine Mfg. Co. v. Allen Group, 14 USPQ2d 1210, 1216, 1989 WL 205782 (N.D.Cal.1989), aff'd 917 F.2d 538 (1990), cert. denied, 500 U.S. 918, 111 S.Ct. 2017, 114 L.Ed.2d 103 (1991). The defendant moved for a judgment notwithstanding the verdict (JNOV), based on the fact that the defendant had solicited and received infringement opinions from outside counsel. Id. 14 USPQ2d at 1216-17. The trial judge denied defendant’s motion for JNOV. Id. 14 USPQ2d at 1217. However, the trial judge declined to increase the damages, noting that the willfulness issue was close on the evidence. Id. Modine and Brooktree, 977 F.2d at 1581, establish that a trial judge may, notwithstanding a jury finding of willful infringement, decline to augment damages because of the closeness of the evidence on the willfulness question.
Although the majority acknowledged our holding in Modine, they try to avoid the effect of that decision by relying on several conclusions which I find to be erroneous. The Jurgenses have not made the clear showing that is required to establish that the district court abused the discretion which is committed to it. Modine, 917 F.2d at 543.
I.
The majority concludes that “the only way the jury could have reached the decision that CBK’s conduct was willful was to reject its contention that it relied in good faith on the opinion of counsel.” I submit that this conclusion is pure speculation without support in the record. We have no way of determining what specific items of evidence the jury thought supported or undercut its finding of willful infringement. Based on the jury instruction and the finding of willful infringement, we know only that the jury believed that at some point in time during the long course of CBK’s infringement, CBK’s justifications and good faith defenses failed. For example, one of the appellant’s principal contentions is that CBK deliberately copied the Jurgenses’ invention. The district court instructed the jury that copying an invention is evidence of willfulness. The jury may have found willfulness on the basis of such deliberate copying, even though the jury may have thought that CBK acted in good faith after it sought the advice of counsel. In addition, the jury was also instructed that it might consider whether CBK attempted to develop a non-infringing device; whether CBK had knowledge of the patent in suit before entering the market; whether CBK asserted defenses in bad faith, and CBK’s behavior as a party to the litigation. The jury may have based its verdict on one or more of these factors. In the absence of a specific finding that CBK acted in bad faith in relying on the opinion of its counsel, the majority’s conclusion is inherently speculative.
II.
The majority also concluded that, in view of the jury’s finding of willful infringement, the trial judge abused its discretion, because the reasons provided by him did not support his decision not to increase the damages award.
The majority declares that it was inappropriate for the trial judge to consider the markings on the patented decoys. However, CBK presented evidence that its representatives never saw any patent information on the model it had in 1985, and therefore it did not know that there was a patent on the product until it received the cease and desist letter of March 31, 1986. The markings on the product were therefore relevant to the issue of whether CBK had any knowledge of the patent prior to entering the market. This evidence bears on the “closeness” of the willfulness question.
In any event, the trial court primarily relied on the fact that CBK sought the advice of an experienced patent attorney, Mr. Lawrence Maxwell, soon after CBK received a letter claiming that CBK’s windsocks infringed the patent. In holding that the reasons stated by the trial judge did not provide an adequate basis for review by this court, the majority relies upon S.C. Johnson & Son v. Carter-Wallace, Inc., 781 F.2d 198 (Fed.Cir.1986). That decision is clearly inapposite, because in Johnson the district court offered no explanation for its decision not to award attorney fees despite a finding of willful infringement. Id. at 201. In sharp contrast to the facts in Johnson, the trial court here explained that it thought the willfulness issue was close. The trial court also reasoned that Mr. Maxwell was a patent attorney with approximately fifteen years of experience in patent law practice; that he investigated the claim, studied the patent, examined the alleged infringing product, and that he advised CBK that their decoys did not infringe the Jurgenses’ patent. Mr. Maxwell also expressed the opinion that even if there was infringement of the patent, the Jurgenses’ patent was not valid. In addition, he testi-fled at trial and a copy of his opinion is in the record.
We have cautioned that a remand should be limited to cases in which further action is required by the district court or in which the appellate court has no way open to it to affirm or reverse the district court’s action. Carroll Touch Inc. v. Electro Mechanical Sys. Inc., 15 F.3d 1573, 1584 (Fed.Cir.1993); Consolidated Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 814-15 (Fed.Cir.1990). When this principle is applied here, it is clear that the reasons given by the trial judge plus other facts of record provide an adequate basis for review by this court and support the district court’s conclusion that CBK’s conduct in manufacturing and selling their decoys was not an egregious or flagrant infringement which justified enhanced damages.
III.
In its opinion the majority held as follows:
Because the jury had rejected CBK’s assertion that it acted in good faith as a matter of fact, the court did not have discretion to reweigh the evidence about the competency of the opinion or CBK’s reliance on it.
As stated above in Part I, I disagree with the majority’s determination that the jury expressly rejected CBK’s contention that it relied in good faith on the opinion of counsel. Assuming argtiendo, however, that the jury made that finding, I would hold that it was not binding on the trial judge. The majority’s conclusion, quoted above, defies logic, is not supported by any cited authority, and is plainly contrary to the precedents of this court.
jn view 0f Modine, the majority acknowledges that the jury’s finding of willful infringement does not mandate that the damages fog increased or that attorney fees be awarded. Nevertheless, the majority disregards this holding. If the jury’s ultimate finding of willful infringement is not binding on the district court, where is the logic in holding that the underlying facts that led the jury to make that ultimate finding are final and binding on the district court?
In declining to enhance damages, the trial court in Brooktree reasoned that
the evidence supporting the jury’s finding was not as strong as it could have been, and is not of the weight and strength that would support the imposition of enhanced damages. Lack of an opinion letter from counsel, and the continued production of the infringing products during litigation are not a sufficient hook upon which to hang an award of enhanced damages.
757 F.Supp. 1088, 1097 (S.D.Cal.1990) (emphasis added), aff'd, 977 F.2d 1555 (Fed.Cir.1992).
In affirming the decision of the district court, this court declared:
In exercising its discretion the trial court may consider the weight of the evidence of willfulness. The court thus considers the culpability of the infringer with due attention to any circumstances in mitigation, the closeness of the question, and any other factors pertinent to the award, in that case, of exemplary damages.
Brooktree, 977 F.2d at 1581.
In Modine, this court expressly approved the trial judge’s consideration of the closeness of the evidence on the issue of willful infringement. 917 F.2d at 543. On this point, the court stated:
Nor is there merit to Modine’s contention that the trial judge’s statement, that willfulness was “sufficiently close on the evidence” that enhanced damages were not warranted, was inconsistent with the jury verdict that willful infringement had been shown by “clear and convincing evidence.” Far from ignoring the jury’s verdict, Judge Jensen’s opinion demonstrated that he carefully considered the finding of willful infringement in light of the deterrent function of enhanced damages in reaching his determination that enhanced damages were not appropriate to this particular case. Modine has utterly failed to demonstrate that this determination was an abuse of discretion.
Id.
These decisions establish that the trial judge may independently weigh the evidence underlying a jury’s finding of willfulness in exercising his discretion under 35 U.S.C. § 284. The only significant difference between this case and Brooktree and Modine is that in the later cases, the trial judges weighed the evidence relating to willful infringement and decided that it was too close to support enhanced damages, whereas in this ease the trial judge cited specific evidence that he deemed supportive of the in-fringer’s position, rather than relying on a general statement that the evidence on the question was close. See 757 F.Supp. at 1097; 14 USPQ2d at 1217. This distinguishing feature buttresses my opinion, as stated in Part II, that the statements in the trial judge’s opinion, plus other material in the record, provide an adequate basis for this court’s review of the decision below.
IV.
I would follow the teaching of Carroll Touch in deciding that there is no justification for remanding this case. Therefore, I would affirm the decision of the district court, because I believe that adherence to our precedents requires that result.
. Maxwell's credentials are relevant to determining whether CBK could reasonably rely on Maxwell's opinion. See Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 793 (Fed.Cir.1995).

Passage view · GavelSight