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Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp.

United States Court of Appeals for the Federal Circuit

September 13, 2004, Decided

01-1357, -1376, 02-1221, -1256


 [***1562]   [*1340]  NEWMAN, Circuit Judge.

Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH is the owner of United States Patent No. 5,927,445 (the '445 patent) entitled "Disk Brake For Vehicles Having Insertable Actuator," is sued on July 27, 1999. At trial to the United States District Court for the Eastern District of Virginia, the appellants Dana Corporation, Haldex Brake Products Corporation, and Haldex Brake Products AB were found liable for infringement and willful infringement. 2 No damages were awarded, for there were no sales of the infringing brakes. Based on the finding of willful infringement the court awarded partial attorney fees under 35 U.S.C. § 285.

 [**7]  The appellants seek reversal of the finding of willful infringement, arguing that an adverse inference should not have been drawn from the withholding by Haldex of an opinion of counsel concerning the patent issues, and from the failure of Dana to obtain its own opinion of counsel. Applying  [*1341]  our precedent, the district court inferred that the opinion of counsel withheld by Haldex was unfavorable to the defendants. After argument of the appeal we took this case en banc in order to reconsider our precedent with respect to these aspects. The parties were asked to submit additional briefing on four questions, and amicus curiae briefs were invited. 3 Knorr-Bremse, 344 F.3d 1336 (Fed. Cir. 2003) (En banc Order).

 [**8]  ] We now hold that no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer's failure to obtain or produce an exculpatory opinion of counsel. Precedent to the contrary is overruled. We therefore vacate the judgment [***1563]  of willful infringement and remand for re-determination, on consideration of the totality of the circumstances but without the evidentiary contribution or presumptive weight of an adverse inference that any opinion of counsel was or would have been unfavorable.


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383 F.3d 1337 *; 2004 U.S. App. LEXIS 19185 **; 72 U.S.P.Q.2D (BNA) 1560 ***; 65 Fed. R. Evid. Serv. (Callaghan) 365


Subsequent History: On remand at, Costs and fees proceeding at, Motion denied by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 372 F. Supp. 2d 833, 2005 U.S. Dist. LEXIS 11256 (E.D. Va., June 6, 2005)

Prior History:  [**1]  Appealed from: United States District Court for the Eastern District of Virginia. Judge T. S. Ellis, III.

Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 344 F.3d 1336, 2003 U.S. App. LEXIS 19817 (Fed. Cir., 2003)

Disposition: Vacated and remanded, cross appeal affirmed.


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Civil Procedure, Judgments, Relief From Judgments, General Overview, Governments, Courts, Judicial Precedent, Patent Law, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals, Damages, Collateral Assessments, Attorney Fees, Infringement Actions, Infringing Acts, Intent & Knowledge, Remedies, Increased Damages, Evidence, Privileges, Attorney-Client Privilege, Exceptions, Scope, Attorneys, Privileged Communications, Work Product Doctrine, Waiver of Protections, Waiver, Inferences & Presumptions, Inferences, International Law, Foreign & International Immunity, Costs, Torts, Duty, Affirmative Duty to Act, Attorney Fees & Expenses, Basis of Recovery, Statutory Awards, Copyright Law, Types of Damages, Compensatory Damages, Costs & Attorney Fees, Punitive Damages