Pre-Issuance Letters Advising Defendant of Pending Patent Application are Relevant to Willfulness

The court denied defendants' motion in limine to exclude letters plaintiff sent to defendant before the patent-in-suit issued. "The first letter . . . advised Defendants that a Provisional Application had been filed and recommended that Defendants 'avoid any practice of the invention that would fall within the scope of claims that will be included in the Utility Application.' The second letter . . . again cautioned Defendants about continuing to produce 'knock-off assemblies' and gave a technical description of Plaintiff’s invention. . . . Despite the intuitive merits of Defendants’ arguments on this issue, the disputed letters are relevant to the willfulness inquiry in this case. . . . [T]he letters are insufficient to show knowledge of infringement because no patent yet existed at the time they were sent. Nevertheless, they tend to show that Defendants were aware of the scope of what would be the [patent-in-suit]. . . . Thus, when Defendants later became aware of the existence of the [patent] on [the date they received actual notice], they already had some knowledge of its content. At the very least, the letter could tend to show that Defendants had 'knowledge' of the scope of the patent, which is relevant to the willfulness inquiry here."

Kahr v. Cole et al, 1-13-cv-01005 (WIED July 28, 2016, Order) (Griesbach, J.)