In Tarkus Imaging, Inc. v. Adobe Systems, Inc., et al., C.A. No. 10-63-LPS (D. Del. June 5, 2012), Judge Stark granted Adobe Systems, Inc.’s motion for summary judgment of no willful infringement, explaining that because Adobe asserted “reasonable claim construction positions under which Adobe would not infringe . . . and credible non-infringement theories even under the Court’s different constructions[,]” the plaintiff could not show by clear and convincing evidence that Adobe acted despite an objectively high likelihood that it infringed a valid patent. Id. at 3-4 (discussing first prong of the Federal Circuit’s test for establishing willful infringement under In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007)). The Court explained that although it “did not ultimately adopt Adobe’s constructions for [the terms ‘output device’ and ‘pictorial dynamic range’] . . . the fact that Adobe asserted reasonable constructions under which its products would not infringe precludes a finding that the first prong of Seagate is satisfied.” Id. at 4. As a result, “the Court should not put the issue of willfulness – including the second “subjective” prong – before a jury.” Id. at 3 (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1236 (Fed. Cir. 2011) (satisfying the objective first prong of the willfulness test is “a predicate to the jury’s consideration of the second prong”)). Moreover, the Court explained that Adobe asserted reasonable non-infringement theories even under the Court’s claim construction, also leading to the conclusion that the first prong of the Seagate test could not be satisfied. Id. at 5.
The Court acknowledged that the parties presented genuine disputes of material fact, but explained that those disputed facts related to the subjective second prong of the willfulness test under Seagate, “an inquiry that must not be put before the jury given Tarkus’s failure to satisfy the [objective] first prong.” Id. at 6.