New rule for proving willful infringement and why opinions from patent counsel still matter after patent reform

A finding of willful infringement in patent litigation is the nightmare scenario that all defendants fear because it allows the patent owner to request that the judge enhance the damages, up to three times compensatory damages. 35 U.S.C. § 284.

A recent decision from the Federal Circuit, however, will likely make it harder for a patent owner to prove willful infringement. The Federal Circuit recently held that the threshold determination of objective recklessness under the Seagate standard for willful infringement is a question of law to be decided by the judge and subject to de novo review. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1006-07 (Fed. Cir. 2012). Further, the America Invents Act prohibits the use of an accused infringer’s failure to obtain or to present advice of counsel to prove willful infringement or inducement to infringe. See 35 U.S.C. § 298. Nevertheless, opinions of counsel can still help negate the intent required for willfulness and can weigh in a defendant’s favor under this threshold prong of the willful infringement test. Read the rest...link....

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