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Court, not Jury, Should Decide on Willful Infringement

By Tanya Roth, Esq. on June 22, 2012 | Last updated on March 21, 2019

If most lawyers can't understand a patent case, then what are we to expect from jurors?

The Federal Circuit Court of Appeals has issued a new decision, which essentially places the decision making power back in the hands of the judge in patent cases.

The ruling, C.R. Bard v W.L. Gore & Associates, stated that the judges are in the best position to determine whether a defendant's conduct in a patent dispute is reasonable, reports Thomson Reuters News & Insight.

The case turned on the issue of willful infringement. A finding of willful infringement would allow enhanced damages, with the two-prong Seagate test setting the appropriate standard for establishing willful infringement.

The Seagate test requires a showing through clear and convincing evidence that the "infringer acted despite an objectively-high likelihood that its actions constituted infringement of a valid patent." The second prong of the test requires a showing that the objectively-defined risk was "so obvious that it should have been known to the accused infringer."

Is the determination of willfulness a question of fact or law? In order to determine willfulness under the Seagate standard, there is a determination of objective recklessness.

As the Federal Circuit noted, the determination of recklessness would entail an assessment of potential defenses in light of the risk presented by the patent.

Given this assessment, the court stated that the objective determination of recklessness should be left to a judge as a question of law, subject to de novo review.

So to break it down, the Federal Circuit found that the trial court had erred in its determination on willfulness. The determination, the Federal Circuit said, should have gone something like this:

The judge should have first determined on her own whether or not the accused infringer, (Gore, in this case) had acted in an objectively-reckless manner, instead of reviewing whether the jury had enough evidence to find willfulness.

The Bard case has been in the courts for over three decades and will certainly set a precedent in the way patent cases are heard before the Federal Circuit Court of Appeals.

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