Hyundai/Kia Infringement Willful Despite Rejections of Patent Claims in Pending Reexaminations

Scott Daniels | April 1, 2011

Last October a jury found that Hyundai and Kia had willfully infringed two patents owned by Affinity Labs of Texas, claiming systems for integrating a portable electronic device, such as an MP3 player, with a second electronic device such as car sound system.  The verdict awarded Affinity $2.4 million from Hyundai and $0.4 million from Kia.  Judge Ron Clark determined not to enjoin Hyundai and Kia, but did assess them an on-going post-judgment royalty of $14.50 per accused Hyundai/Kia vehicle sold with an iPod cable.

What interests us is a post-trial motion by Hyundai/Kia that their infringement could not have been willful because the PTO had issued non-final rejections of the claims of both patents in co-pending reexamination proceedings – their argument was that they could not have acted in an objectively willful manner if PTO examiners believed that the claims were obvious over the prior art.  We have seen in recent months a greater willingness among trial judges to take reexamination decisions into account when considering issues such as willfulness (here). 

Judge Clark, however, was not convinced.  Monday he denied Hyundai/Kia’s post-trial motion: “[t]his court rejects the contention that the Hyundai/Kia Defendants’ continued infringement is not willful merely because the asserted claims of the patents-in-suit have been rejected in a pending reexamination.”  Further, “until the jury’s verdict is nullified by reversal of this court’s judgment on appeal, or the reexamination rejections have become final, the Hyundai/Kia Defendants are adjudged infringers.”  What the Judge meant by “final” was unclear, but we suspect he meant that all possible appeals of a rejection have been exhausted.

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