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Federal Circuit holds the objective prong of the willful infringement analysis is a question of law to be reviewed de novo
June 26, 2012
Intellectual Property Alert
Author(s): Anthonie E. Moll
The Federal Circuit granted en banc rehearing for limited purpose of revising the Panel’s opinion regarding willful infringement.  The Panel’s revised opinion holds the threshold objective prong of willful infringement to be a question of law based on underlying mixed question of law and fact that is best decided by the district court and reviewed de novo.
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On June 14, 2012, the Federal Circuit, in Bard Peripheral Vascular, Inc., v. W.L. Gore & Assocs., Inc., No. 2010-1510, held that the threshold objective prong to the Seagate test “is a question of law based on underlying mixed questions of law and fact and is subject to de novo review.”[1]

Bard Peripheral sued Gore in 2003 for patent infringement.  The patent-in-suit was filed in 1974 and issued twenty-eight years later in 2002.  During this prosecution, the application was the subject of an interference proceeding between the parties, including two appeals to the Federal Circuit from the BPAI’s decisions.

After a seventeen-day trial in 2007, a jury found the patent valid and willfully infringed by Gore.  The district court denied Gore’s motions for JMOL and commented that this case was “the most complicated case th[e district] court has presided over.”[2]

Gore appealed the verdict including, inter alia, the finding of willful infringement.  The majority of the Panel affirmed the district court on all grounds, including the award of enhanced damages.  Judge Newman authored a strongly worded dissent targeting the issue of inventorship and, based on the perceived errors, the affirmation of willful infringement.  Judge Newman concluded by stating the district court’s finding was an “insult to judicial process.”  The en banc Federal Circuit returned the case to the Panel for the limited purpose of revisiting the finding of willful infringement.

Willful infringement requires a patentee to establish both an objective threshold and a subjective element by clear and convincing evidence.[3]  The objective threshold requires a showing “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.”[4]   Once the objective threshold is satisfied, then the patentee must show that the objective risk “was either known or so obvious that it should have been known to the accused infringer.”[5] ]   Typically, the question on appeal has been whether the accused infringing actions were “reasonable.”  The ultimate question of willfulness has long been treated as a question of fact, even after Seagate.[6]   The Federal Circuit had never needed “to clearly delineate the standard applicable toSeagate’s objective test.”[7]

Upon reconsideration, the Panel found “simply stating that willfulness is a question of fact oversimplifies the issue.”[8]e.g. both validity and non-infringement.  Despite the possible underlying questions of fact, the Panel found that objective recklessness “is best decided by the judge as a question of law subject to de novo review.”[9]

This means a judge may find no objectively high likelihood of infringement and dispose of a count of willful infringement in a pre-trial motion, or may wait and issue judgment as a matter of law after the jury verdict.  The latter scenario allows the jury to decide underlying questions of fact, including questions related to anticipation or obviousness.  “But . . . the ultimate legal question . . . [of reasonableness] should always be decided as a matter of law by the judge.”[10]

The Panel concluded by remanding to the district court for a determination of objective recklessness under this new standard, namely “whether a ‘reasonable litigant could realistically expect’ those defenses to succeed.”[11] Judge Newman dissented from the partial remand because “it is apparent [from the record] that willful infringement is not supportable,”[12]  and stated that a retrial on willfulness will also render the issues of validity and inventorship relevant for review.


  1. Bard, slip op. at 4.
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  2. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d 1171, 1177 78 (Fed. Cir. 2012) (alteration in original).
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  3. In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).
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  4. Id.
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  5. Id.
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  6. Bard Peripheral Vascular, No. 03-CV-0597, slip op. at 5.
    [Back to reference]

  7. Id.
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  8. Id. at 6.
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  9. Id. at 6 7.
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  10. Id. at 9.
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  11. Id. at 10.
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  12. Id. dissenting op. at 3.
    [Back to reference]


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