Masimo Corp. v. Philips Elecs. N. Am. Corp.

Where an accused infringer presents reasonable defenses for its alleged infringement, it will defeat a claim of willful infringement.

Opinion (THYNGE): Masimo Corp. ("Maismo") sued Philips Elecs. N. Am. Corp. ("Philips") alleging infringement of four patents related to pulse oximetry. Philips moved for summary judgment on willful infringement and lost profit damages. Willful infringement is analyzed under a two prong test. First, the claimant must show “by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” If that showing is made, the claimant must then establish that the objective-risk was known or so obvious that it should have been known by the infringer. The first prong is resolved by the judge as a question of law even where its ultimate resolution depends on mixed questions of law and fact. If the defense offered by the alleged infringer is reasonable, the first prong of the test is not met. For the first patent considered, the court determined that because it had initially adopted Philips's proposed claim construction, which would have supported finding no infringement, Philips had demonstrated that its actions were reasonable, which precluded a finding of willful infringement. For the second patent, the court determined that the strong invalidity argument advanced by Philips showed that its actions were not objectively reckless and could not fulfill the requirements of the first prong of the willfulness test. For the third patent, the court credited Philips's reasonable noninfringement arguments, including its proposed claim construction, and again determined that the first prong of the test was not met. Finally, the court determined that Philips's invalidity argument for the fourth patent, particularly the failure of the written description to describe the process implemented in the patent, precluded finding the first prong satisfied. Accordingly, because Philips presented reasonable defenses for its actions, the court GRANTED Philips' motion to dismiss all of Masimo's willful infringement claims.