Paper Converting MacHine Company v. Magna-Graphics Corporation

NIES, Circuit Judge,

dissenting.

It will come as no surprise that I dissent to the trebling of damages with respect to the Fort Howard machine since I continue to believe there was no infringement in assembling and testing less than the complete claimed invention. However, looking only at the damage issue, I cannot agree that Magna-Graphie’s infringement was willful because it obtained insufficient advice from counsel. The district court states that “[a]ll that [counsel] was clear *1017on was that Magna-Graphics should not test with the completed assembly.” In the court’s view it follows that the question of infringement by less than a complete assembly was left open, a question on which a reasonable person would have sought additional advice.

' In my view, counsel’s testimony with respect to his advice was not so limited. No advice was needed that a complete assembly would infringe (whether or not testing was done). The import of Deepsouth, the case he discussed with them, is not that complete assembly infringes but that an incomplete assembly does not infringe. The district court converted meaningful advice given to a client who was in danger of contempt into empty conversation.

Because Magna-Graphics acted in accordance with advice of counsel that was reasonable at the time it was given, I would reverse.