IP and Business: ‘Willful’ Patent Infringement Just Became Harder to Prove

 “This development likely will make it harder to prove willful infringement and could cost patentees millions of dollars because a showing of willful infringement is required for an award of enhanced damages.” – Ballard Spahr LLP

For your reference, here’s an update on a recent Federal Circuit change to the willful infringement standard. From lawyers on JD Supra, what it all means:

Federal Circuit Refines Willful Patent Infringement Standard (Patton Boggs LLP)

“For the first time, the Federal Circuit set standards on the objective-risk portion of a willful patent infringement analysis, holding that such analysis is a question of law to be resolved by a judge, subject to full review on appeal. In Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., the Court granted Gore’s petition for rehearing en banc to reconsider the issue of willfulness and the standard of review applicable to it…” Read on>>

Federal Circuit Passes Torch From Juries to Judges for Willful Infringement Determinations (Bracewell & Giuliani LLP)

“The Federal Circuit last made significant alteration to its analysis of willful infringement about five years ago in its previous In re Seagate Technology decision. In re Seagate first established the two-prong test for willful infringement that requires: (i) a patentee to show by clear-and- convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent; and (ii) the patentee to demonstrate that this objectively defined risk was either known or so obvious that it should have been known to the accused infringer…” Read on>>

Federal Circuit Says Trial Judge Decides Threshold Issue of Willful Infringement (Ballard Spahr LLP)

“Until now, trial judges were allowing juries to decide both the objective and subjective prongs, as well as the ultimate decision as to willful infringement. But last week’s decision fundamentally changes the dynamics of the trial by reserving part of the willfulness decision for the trial judge…” Read on>>

Trial Court’s New Role in Willful Infringement Decisions (Armstrong Teasdale)

“While each case is different, it would not be unexpected for the trial court and/or the Federal Circuit to determine that an accused infringer was not unreasonable if it believed the subject patent was not infringed or was invalid. Even if the accused infringer was wrong in the belief, the reasonableness inquiry offers more room to defend the willfulness of the actions taken. How trial courts handle this inquiry remains an open question, but it would not be unexpected for there to be separate proceedings to aid the court in its required determination. Because the trial court’s decision will receive no deference on appeal, trial courts may be more reluctant to find willfulness out of fear of being reversed…” Read on>>

Additional IP alerts and advisories on JD Supra>>