IP Law Bulletin

About five years ago, the Federal Circuit in In re Seagate Technology set-out a two-prong test for proving a patent was willfully infringed: (1) 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 (2) 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. In a recent decision Bard Peripheral v. W.L. Gore, the Federal Circuit provided further insight to this test by holding that the first prong, i.e., whether a defendant’s actions were objectively reckless, is a question of law to be determined by the judge. While the second prong and the ultimate determination of willful infringement remains a question for the jury to decide, it is anticipated that when a judge finds a defendant acted in an objectively reckless manner, a jury will find in favor of the second prong, and thus in favor of willful infringement. However, by putting the first question in the hands of the judge, it is also anticipated that there will be fewer findings of objective recklessness because many consider it more difficult to convince a judge than a jury that a defendant’s actions were objectively reckless. Of note to litigators is that the objective reckless determination is now subject to de novo review, i.e., without deference to the lower court’s decision, because the determination is a question of law.