Federal Circuit Issues New Standards For Determining Willfulness

This article previously appeared in Last Month at the Federal Circuit, July, 2012.

[Appealed from D. Ariz., Judge Murguia]

Judges: Newman (concurring-in-part and dissenting-in-part), Gajarsa (author), Linn

In Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., No. 10-1510 (Fed. Cir. June 14, 2012), the Federal Circuit vacated portions of its previous decision in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 670 F.3d 1171 (Fed. Cir. 2012), relating to willfullness. The Court held that the threshold objective prong of the willfulness standard enunciated in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), is a question of law based on underlying mixed questions of law and fact, and is subject to de novo review. The Court remanded the issue of willfulness to the district court to reconsider its denial of JMOL of no willful infringement, with instructions that, if the court grants the JMOL, it should then reconsider its decisions on enhanced damages and attorneys' fees.

The Federal Circuit previously held that the district court was correct in its judgment and affirmed all of the conclusions reached by the district court. W.L. Gore & Associates, Inc. ("Gore") then filed a petition for rehearing and rehearing en banc, in which Gore again faulted the district court's willfulness analysis. Separately, an amicus brief in support of Gore's petition argued that the objective prong of willfulness should be considered a question of law subject to de novo review on appeal. The Federal Circuit granted the petition for rehearing en banc and asked the original panel to revisit the issue of willfulness and the applicable standard of review.

In revisiting the issue of willfulness, the Federal Circuit noted that Seagate established a two-pronged test for establishing willful infringement. First, "a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." Slip op. at 4 (quoting Seagate, 497 F.3d at 1371). Once the "threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer." Id. (alteration in original) (quoting Seagate, 497 F.3d at 1371). The Seagate court left it to future cases to further develop the application of this standard. Following...