Today's Date: April 16, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

Willful Patent Infringement

Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
Blog | Twitter | Facebook | LinkedIn
Posted: January 20, 2009 @ 1:59 pm
Tell A Friend!

Willfulness is a question of fact and involves a determination as to an infringer’s state of mind. Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1221 (Fed.Cir.1995) (willfulness is a question of fact that involves elements of intent, reasonableness, and belief); Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 792 (Fed.Cir.1995) (same); Electro Medical Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1056 (Fed.Cir.1994); Read Corp. v. Portec, Inc., 970 F.2d 816, 828 (Fed.Cir.1992); Stickle v. Heublein, Inc., 716 F.2d 1550, 1565 (Fed.Cir.1983) (intent and reasonable beliefs are the primary focus of a willful infringement inquiry). Specifically, in determining the question of willfulness, the primary consideration is
whether the infringer acted in disregard of the infringed patent with no reasonable basis to believe it had a right to do the acts in question. Pall Corp., 66 F.3d at 1221 (factfinder should examine whether the infringer deliberately disregarded the property rights of the patentee); Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 944 (Fed.Cir.1992) (the focus of a willfulness inquiry should be on whether the infringer had no reasonable belief for thinking it had a legal right to continue its conduct). One who has actual notice of a patent owner’s rights has an affirmative duty to respect those rights. Read Corp., 970 F.2d at 828 (citing Rolls-Royce, Ltd. v. GTE Valeron Corp., 800 F.2d 1101, 1109 (Fed.Cir.1986)); Avia
Group, Int’l, Inc. v. L.A. Gear California, Inc.
, 853 F.2d 1557, 1566 (Fed.Cir.1988).

The issue of willfulness “rests on a determination of the infringer’s state of mind,” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1579 (Fed.Cir.1996), and “includes elements of intent, reasonableness, and belief,” Pall
, 66 F.3d at 1221. Among the grounds for a willfulness finding are “[t]he extent to which the infringer disregarded the property rights of the patentee, the deliberateness of the tortious acts, or other manifestations of unethical or injurious commercial conduct.” Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1583 (Fed.Cir.), cert. denied, 117 S.Ct. 275, 136 L.Ed.2d 198 (1996). No hard-and-fast rules govern the willfulness determination, which should be made after evaluating all the relevant circumstances. Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 792 (Fed.Cir.1995). Willful infringement must be proven by clear and convincing evidence. Pall Corp., 66 F.3d at 1221; In re Hayes Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527, 1543 (Fed.Cir.1992).

For more information on this topic please see:


Establishing Willfulness  

In establishing willfulness, there are no definitive rules regarding willfulness or precise factors indicative of willfulness. Graco, Inc., 60 F.3d at 792; Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1279 (Fed.Cir.1995); American Medical Sys., Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 1530 (Fed.Cir.1993), cert. denied, 511 U.S. 1070, 114 S.Ct. 1647, 128 L.Ed.2d 366 (1994).  Rather, willfulness is determined by the totality of the circumstances. Graco, Inc., 60 F.3d at 792; Transmatic, Inc., 53 F.3d at 1279; American Medical Sys., Inc., 6 F.3d at 1530.

The Federal Circuit has discussed some relevant factors to support a finding of willfulness, namely:

    (1) whether the infringer deliberately copied the ideas or design of another;

    (2) whether the infringer, when it knew of the other’s patent protection, investigated the scope of the patent and formed a good-faith belief that the patent was invalid or that it was not infringed (see Legal Opinion below);

    (3) the infringer’s behavior as a party to the litigation;

    (4) a defendant’s size and financial condition;

    (5) the closeness of the case;

    (6) the duration of the defendant’s misconduct; 

    (7) remedial action by the defendant;

    (8) the defendant’s motivation for harm; and

    (9) whether the defendant attempted to conceal its misconduct.

See Read Corp., 970 F.2d at 826-28; Bott v. Four Star Corp., 807 F.2d 1567, 1572 (Fed.Cir.1986), overruled on other grounds, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed.Cir.1992).

Two key factors, which are mentioned above, in determining whether a patent owner has proven willful infringement are whether the defendant has reasonably relied on a legal opinion by competent counsel and whether the defendant deliberately copied the invention claimed in the patent.


Reliance on Legal Opinions

All persons and entities are charged with an affirmative duty to avoid infringement of the known patent rights of others, a duty that usually includes seeking and obtaining competent legal advice before engaging in an activity that could result in infringement. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1056 (Fed.Cir.1994); Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 36, 944 (Fed.Cir.1992); Spindelfabrik Suessen- Schurr Stahlecker & Grill GmbH v. Schubert & Salzer Maschinenfabrik Aktiengesellshaft, 829 F.2d 1075, 1084 (Fed.Cir.1987), cert. denied, 484 U.S. 1063, 108 S.Ct. 1022, 98 L.Ed.2d 987 (1988). Reliance on the legal opinion of a competent lawyer is evidence of good faith, but does not require a finding of nonwillfulness. See Hayes Microcomputer Prods. Patent Litig., 982 F.2d at 1543. The relevant inquiry is the nature of the legal opinion and its effect on an infringer’s actions. Amsted Indus., Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 182 (Fed.Cir.1994). As the Federal circuit has stated:

While an opinion of counsel letter is an important factor in determining the willfulness of infringement, its importance does not depend upon its legal correctness. Indeed, the question arises only where counsel was wrong. Rather, counsel’s opinion must be thorough enough, as combined with other factors, to instill a belief in the infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable. Thus, the infringer’s intent and reasonable beliefs are the primary focus of a willful infringement inquiry.

Ortho Pharmaceutical Corp., 959 F.2d at 944 (citation omitted). The “most important consideration” is whether something in the legal opinion “would alert a client to reject the letter as an obviously bad opinion.” Read Corp. v. Portec, Inc., 970 F.2d 816, 830 (Fed.Cir.1992).  


Deliberate Copying of Inventions

Another relevant factor in determining willfulness is whether the infringer deliberately or intentionally copied the ideas or design of another. Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1414 (Fed.Cir.1996). The party alleging infringement need not prove that the infringer “slavishly copied” the design or idea of the patent. Stryker Corp., 96 F.3d at 1414. In Stryker the Federal Circuit explained:

We have found no authority in our precedent for the proposition that the fact finder must find “slavish copying” in order to conclude that the infringer copied the patentee’s invention. The district court, in summarizing the legal standard for determining willfulness for the purpose of increasing damages, correctly stated that one of the relevant factors is “whether the infringer deliberately copied the ideas or design of another,” citing In re Hayes Microcomputer Products, Inc., 982 F.2d 1527, 25 USPQ2d 1241 (Fed. Cir. 1992), and Bott v. Four Star Corp., 807 F.2d 1567, 1 USPQ2d 1210 (Fed. Cir. 1986). Neither Hayes nor Bott holds or states that any copying must be “slavish copying” in order for it to be a relevant factor in determining willfulness. Instead, they respectively state that the inquiry is whether the infringer “intentionally copied the ideas of another,” Hayes, 982 F.2d at 1543, or “deliberately copied the ideas or design of another.” Bott, 807 F.2d at 1572.


About the Author

Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)

B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center

Send me an e-mail

View Gene Quinn's profile on LinkedIn

Gene is a US Patent Attorney, law professor and the founder of He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. As an electrical engineer by training his practice primarily focuses on software, computers and Internet innovations, as well as electrical and mechanical devices. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide.