Courts To Play Greater Role Moderating Enhanced Damages For Willful Patent Infringement

Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. (Fed. Cir. June 14, 2012)

In this medical-device patent-infringement action, an Arizona federal jury found that W.L. Gore willfully infringed Bard's Prosthetic Vascular Graft patent. The District Court then decided to double the jury's $185.6 million damages award. Gore lost its post-trial challenge for judgment as a matter of law (JMOL) and appealed to the United States Court of Appeals for the Federal Circuit. On rehearing, a Federal Circuit panel took the opportunity to give courts a larger role—and juries a smaller role—in deciding whether patent infringers acted willfully. The jury's role in deciding willfulness is now limited to determining whether the infringer subjectively knew or should have known that it was infringing a valid patent. It is now the court's duty to assess whether there was any objectively reasonable argument that the patent was invalid or not infringed. The Federal Circuit's decision in Bard v. W.L. Gore will likely make multiplied patent damages awards harder to obtain.

Background

The Patent Act allows courts to multiply actual patent damages—the estimated profits lost because of an act of patent infringement—by a factor of up to three, as punishment and deterrence for so-called "willful infringement." 35 U.S.C. § 284.

Patent infringement is willful if clear and convincing evidence shows that it was done despite (1) an objectively high risk of infringement (2) that the infringer either knew about or should have known about. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). Until now, willfulness has been considered a "question of fact." That left it mostly up to jurors to decide whether an infringer acted willfully. Courts could issue judgment as a matter of law (i.e., JMOL) contrary to a jury verdict of willful infringement only if the verdict lacked "substantial evidence" under either of the above two willfulness factors. For example, the Federal Circuit upheld the District of Rhode Island's decision of no willfulness despite the jury's contrary verdict in Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1295, 1311 (Fed. Cir. 2011), because "Uniloc failed to show that a reasonable jury could find Microsoft's conduct objectively reckless on the evidence presented."

Detailed description of the case

In Bard v. W.L. Gore, the Federal Circuit decided that whether patent infringement was willful depends on questions of both...