Outside Prosecution Counsel’s Knowledge of Patent Not Imputed to Client

The court granted defendants' motion for summary judgment that they did not willfully infringe plaintiff's winch system patent because plaintiff presented insufficient evidence of knowledge through the knowledge of defendants' outside prosecution counsel. "⁠[T]he only correspondence between [outside counsel] and [defendants] regarding the [patent-in-suit] lends no support to Plaintiff's view that there is 'extensive evidence of knowledge' in the record . . . . At most, the emails are fairly read as providing [defendants] with notice of the [patent's] existence. However, [counsel] clearly advised [defendants] against further action with regard to the [patent]. Perhaps [defendants] should have looked into the matter further, against the advice of counsel, and sought a second opinion. Nevertheless, there being no evidence that further action was taken, willfulness cannot be established. . . . Plaintiff devotes a significant portion of its brief to the argument that whatever knowledge [counsel] had of the [patent-in-suit] should be imputed to [defendant] based on an agency-principal theory. Plaintiff has not brought to the Court's attention a single case holding that knowledge from outside legal counsel is imputable to a client corporation for purposes of willful patent infringement."

Olaf Soot Design, LLC v. Daktronics, Inc., et al, 1-15-cv-05024 (NYSD July 18, 2018, Order) (Sweet, USDJ)