Willful Infringement – Mixed Signals From The Federal Circuit – Will The Supreme Court Provide Guidance?
In re Seagate sets out the test for willful infringement. It’s a two prong test, but it’s the first prong – a patent owner must prove that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent – that is causing confusing results in the district courts. 
The confusing results should not be surprising. Rather than explaining how to apply this two prong test, the Federal Circuit in Seagate simply left “it to future cases to further develop the application of this standard.”  Indeed, the Federal Circuit itself does not seem to apply the first prong of the test consistently.
In applying the first prong of the test, the Federal Circuit sometimes appears to limit its review to the “record developed in the infringement proceeding” – i.e., the defenses presented at trial. In DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., the Court emphasized that “Seagate’s first prong is objective, and ‘[t]he state of mind of the accused infringer is not relevant to this objective inquiry.’”  Based on this principle, DePuy explains that evidence of copying does not bear on the first prong of Seagate, but only on the second prong:
[E]vidence of copying in a case of direct infringement is relevant only to Seagate’s second prong, as it may show what the accused infringer knew or should have known about the likelihood of its infringement.
To read the full article, click here: http://www.law360.com/articles/487187/mixed-signals-from-fed-circ-on-willful-infringement.
Alejandro Menchaca is a shareholder at McAndrews, Held & Malloy in Chicago. His practice includes every facet of intellectual property law, and he has extensive experience in litigation and prosecution of patents and trademarks.
Originally published on Law360.com.