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Potential New Barrier to Verdicts of Willful Infringement?

By Matthew W. Siegal and B. Clayton McCraw
August 30, 2012

The question of whether a defendant had willfully infringed a patent has typically been decided by a jury. However, under Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., 682 F.3d 1003 (Fed. Cir. 2012) (“Bard II “), a judge may now have the exclusive role of determining whether a jury is entitled to decide this question.

A finding of willful patent infringement can lead to an enhancement of damages, within the court's discretion. A successful claim of willful infringement requires proof of both: a) the infringer's objectively reckless infringement (an objective prong) as well as b) that the objectively defined risk was either known or should have been known by the infringer (a subjective prong). See In re Seagate Technology, LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc). On June 14, 2012, the Federal Circuit ruled that the objective prong of the Seagate willfulness test, although admittedly potentially predicated on factual issues, is best decided by a judge, as a question of law, as opposed to a common practice of treating the entire question as one for the jury. Bard II.

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