Patent Alert: Federal Circuit clarifies threshold objective recklessness willfulness prong question of law reviewed de novo (Bard v. W.L. Gore)
June 14, 2012
(Willfulness) Yesterday, Thu., June 14, 2012, in Bard v. W.L. Gore, No. 2010-1510, the Federal Circuit (Newman (dissent-in-part), Gajarsa and Linn) clarified that the threshold objective recklessness prong of willfulness ultimately is a question of law for the court to decide based on mixed questions of law and fact that the Federal Circuit will review de novo. This case provides a good summary of the current willful infringement standard.
The Court reviewed the Seagate two prong willfulness standard: “[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” and “[o]nce 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.”
The Court ruled that the judge determines the threshold objective recklessness prong as a matter of law – to be reviewed de novo – though it may first send underlying facts or mixed questions of law/fact to the jury. The Court remanded for the district court to determine “based on the record ultimately made in the infringement proceedings, whether a reasonable litigant could realistically expect [its asserted] defenses to succeed.” If not, “only then can the jury’s subjective willfulness finding be reviewed for substantial evidence.”
Judge Newman dissented-in-part, because the objective recklessness prong could be decided in favor of defendant on appeal without a remand.
An annotated copy of the case is available at Bard v. W.L.Gore. This alert was prepared by David W. Long.
Copyright © 2012 Dow Lohnes PLLC. All Rights Reserved. We permit and encourage copying and distributing with attribution. This publication was prepared from an initial review of the subject matter herein for general information purposes. The information presented is not legal advice and does not create an attorney-client relationship. Do not act upon information herein without professional legal counsel addressing the facts and circumstances specific to you.
Subscribe to these Alerts. Follow us on Twitter @DowLohnesIP.