7 Key Takeaways For Litigating Willful Patent Infringement

• Published date: 29 November 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Mayer Brown
• Author: Mr Brian Nolan and Manuel J. Velez

After finding that an accused infringer has willfully infringed a patent, a court may increase "damages to three times the amount found or assessed," under Title 35 of the U.S. Code, Section 284.¹

Given that recent patent cases have yielded nine- and 10-figure damages awards, it is important to keep abreast of legal developments concerning willful infringement.²

In this article, we explore practical takeaways for litigating willful infringement in light of recent case law. These cases show that parties focus on the following seven areas:

• The impact of the 2021 SRI International Inc. v. Cisco Systems decision in the U.S. Court of Appeals for the Federal Circuit;
• The accused infringer's knowledge;
• Past relationships between the parties;
• Alleged copying;
• Attempts to invalidate the patent through post-grant proceedings;
• Lack of noninfringement arguments; and
• Reasonableness of an accused infringers' opinion of counsel.

1. Willfulness findings remain relatively stable after SRI; enhanced damages findings declined.

The Federal Circuit clarified the standard for willful infringement in SRI v. Cisco.³

In reversing the U.S. District Court for the District of Delaware's order granting the accused infringer's motion for judgment as a matter of law of no willful infringement, the Federal Circuit addressed the language in the U.S. Supreme Court's June 2016 Halo Electronics Inc. v. Pulse Electronics Inc. decision.

The Federal Circuit explained that the language in Halo concerning "wanton, malicious, and bad-faith" refers to "conduct warranting enhanced damages" not conduct warranting a finding of willfulness and that "the concept of 'willfulness' requires a jury to find no more than deliberate or intentional infringement."⁴

Using this test, the court found that substantial evidence supported the jury's finding of willful infringement.⁵

Has the Federal Circuit's clarification in SRI affected the incidence of willful infringement and enhanced damages findings? To explore this question, we reviewed published and unpublished district court decisions that postdate SRI and compared the data to published pre-SRI rates for willful infringement and enhanced damages.

For the willful infringement analysis, the data came from district court decisions where the patentee pleaded willfulness and there was a final decision on the merits regarding willfulness.⁶

For the enhanced damages analysis, the data came from district court decisions where there was a willfulness finding and the...