IPWatchdog - Helping Inventors Help Themselves™ |
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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 Corp., 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:
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.
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 936, 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:
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:
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