After a finding of willful infringement, a court may enhance damages under 35 U.S.C. § 284. This post deals primarily with finding willfulness, and not enhancing damages.
From 2007-16, In Re Seagate was the law for finding willfulness. In June 2016, Halo v. Pulse rejected the Seagate test and established new law for finding willful infringement. Willfulness under Seagate first required the patentee showing that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. After this showing of objective recklessness, the patentee then had to show that the risk of infringement was either known or so obvious that it should have been known to the accused infringement. Id.
The Supreme Court in Halo rejected the Seagate test as “unduly rigid,” such that the test insulated “some of the worst patent infringers from any liability for enhanced damages.” Under Halo, objective unreasonableness is no longer required to find willfulness. Rather, the “subjective willfulness of a patent infringer, intentional or knowing, may (not must) warrant enhanced damages, without regard to whether his infringement was objectively reckless.” (parenthesis added). Halo; see Innovention v. MGA (remanding case, after jury finding of subjective willfulness, so district court could decide whether to enhance damages).
Evidentiary standard and appellate review. Under Halo, the claiming party must show willfulness by preponderance of the evidence (rejecting Seagate’s clear and convincing standard). And subjective willfulness is a factual component, to be resolved by the jury, and to be reviewed on appeal for substantial evidence. Wbip v. Kohler (affirming jury willfulness finding).
Subjective willfulness. Subjective willfulness requires showing that the risk of infringement was either known or so obvious that it should have been known to the accused infringer. WesternGeco v. ION. “Knowledge of the patent alleged to be willfully infringed continues to be a prerequisite to enhanced damages.” Wbip. The jury should consider, among other factors, “what [defendant] knew or had reason to know at the time of the infringement.” Halo v. Pulse (on remand from the Supreme Court). In Wbip, the Federal Circuit affirmed a finding of subjective willfulness where defendant admitted it had pre-suit knowledge of the patents, and there was testimony that plaintiff marked its products with the patents-in-suit since their issuance. Because subjective willfulness under Seagate was shown by clear and convincing standard, a willfulness finding under Seagate supports finding willfulness under Halo, which only requires preponderance of the evidence. See Stryker v. Zimmer (on remand from the Supreme Court, affirming jury finding of willfulness under Seagate).
Objective willfulness. Objective recklessness is no longer required for willfulness, so a district court finding of no willfulness cannot stand if it’s based on the objective reasonableness of the defense. See WesternGeco (vacating decision of no willfulness that was based on a finding of no objective recklessness); see also Alfred E. Mann v. Cochlear (same). The existence of a reasonable defense by the accused infringer at trial does not insulate a defender from enhanced damages because culpability is “measured against the knowledge of the actor at the time of the challenged conduct,” not at a subsequent proceeding based “on the strength of [an] attorney’s ingenuity.” Halo. Though no longer required to find willfulness, objective reasonableness may be considered as a factor in the decision to enhance damages. WesternGeco.
Preliminary injunction. A patentee mustn’t seek a preliminary injunction to assert willfulness. Mentor Graphics v. EVE-USA (holding that patentee may present evidence of willfulness despite that it didn’t seek a preliminary injunction).
Enhancing damages and awarding fees. A finding of willfulness does not automatically support enhancing damages or awarding attorney fees. Rather, the district court must make a discretionary inquiry as to each. Stryker (vacating the award of enhanced damages and of attorney fees after affirming the jury finding of willfulness).
Addendum (subsequent relevant Federal Circuit cases):
Appellate review:
Party waived right to challenge finding of no willfulness despite change in law (Ultratec v. Sorenson)
Evidentiary standard:
It is highly suggested to avoid having intoxicants and over consumption viagra stores in canada of food while using this medicine. If you want to cut the disease, you get relief cheap discount viagra from your impotence. Erectile dysfunction or impotence is one of the most common sexual conditions cialis soft tabs faced by millions of men. The normally approved design levitra 10 mg bears the rounded shape colored in orange outfit.
Sales of the entire product appropriate as the royalty base if patentee properly apportions the royalty rate (Exmark v. Briggs & Stratton)
Liability as to one claim does not support general damages, willfulness finding, enhancement, or attorney fees (Omega Patents v. CalAmp)
Subjective willfulness:
Patent owner’s lost profits, willfulness finding, and enhanced damages affirmed (Georgetown Rail v. Holland)
After the alleged infringer produces unmarked products, the patentee has the burden to show they’re not covered (Arctic Cat v. Bombadier)
Enhanced damages vacated because district court did not particularly explain the basis for trebling the award (WCM v. IPS)
Enhancement vacated because district court did not sufficiently consider the closeness of the case (Polara v. Campbell)
Willfulness and enhancement vacated, but exceptionality finding affirmed (SRI International v. Cisco)
Enhancing damages:
Lost profits award reversed because of non-infringing substitute; permanent injunction then vacated (Presidio v. American Technical Ceramics)
Jury royalty awarding plaintiff 71% of infringer’s per-unit profit is supported by the evidence (Exergen v. Kaz)