Recently the United States Court of Appeals for the Federal Circuit dramatically change the rules for proving willful patent infringement—and justifying enhanced damages—in In re Seagate Technology. A patentee alleging willful infringement must now first prove "by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." He must then show that the objectively defined risk was "either known or so obvious that it should have been known to the accused infringer." The court expressly delegated substantive development of the new test to future cases. Because district courts have generally struggled to apply the new standard, and because a clearer standard will provide patentees and their competitors increased certainty in business planning, this article proposes a multi-factor test for applying In re Seagate Technology. To determine the objective risk of infringement of a valid patent, courts should at least consider (1) the similarity of the patented invention to the infringing conduct, (2) conclusions of infringement, invalidity, and unenforceability found in pre-litigation opinions of counsel, (3) characteristics of the infringer's commercial market including patent saturation and the pace of innovation, and (3) legitimate defenses to infringement that were raised at trial. To determine whether the infringer knew or should have known of the objectively high risk of infringement, courts should at least consider (1) evidence that the patentee provided the infringer clear notice, (2) whether the infringer obtained an opinion of counsel that communicated a high risk of infringement, (3) whether the patentee and the infringer were in a special relationship, (4) the defendant's level of skill compared to a person having ordinary skill in the art, (5) contemporary publicity of the patentee or its patent, (6) markings on the patented product, and (7) the length of time between patent issuance and commencement of the infringing activity.
Randy R. Micheletti,
Willful Patent Infringement after In Re Seagate: Just What is "Objectively Reckless" Infringement?,
Chi.-Kent L. Rev.
Available at: https://scholarship.kentlaw.iit.edu/cklawreview/vol84/iss3/17