Proving Willful Infringement: Is There a Role for Experts?

Vol. 5 No. 2

By

Elizabeth Iglesias is a litigation associate in the Los Angeles office of Irell & Manella LLP, where she specializes in intellectual property litigation. She can be reached at eiglesias@irell.com. Orion Armon is a partner in Cooley LLP’s intellectual property litigation practice group in its Broomfield, Colorado, office. His practice focuses on patent litigation, with particular emphasis on software and electronics patent litigation cases. He can be reached at oarmon@cooley.com. The views expressed herein are those of the authors and do not reflect the views of Cooley LLP, Irell & Manella LLP, or any of their clients. This article is the result of collaboration between members of the Young Lawyer Action Group and the Patent Legislation Committee of the ABA Section of Intellectual Property Law.

The law on willful infringement has seen important changes in the past five years, beginning with the Federal Circuit’s decision in In re Seagate Technology LLC,1 and more recently with the Federal Circuit’s June decision in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.2 In Seagate, the Federal Circuit established a two-pronged test for proving willful infringement, requiring the patentee to prove at least “objective recklessness” by the accused infringer.3 Bard clarified Seagate by holding that the first prong of the test—which requires the patent holder to prove that an objectively high likelihood of infringement existed during the period of alleged willful infringement—is a mixed issue of fact and law that must be decided by the court, not the jury.4 After Seagate and Bard, there are unresolved questions regarding what types of proof are adequate for proving willfulness, including whether expert testimony may be offered to satisfy the patentee’s burden of proof.

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