Who Decides Willfulness Or Misconduct

  • Willfulness Is For The Jury: “The entire willfulness determination is to be decided by the jury.” Exmark (Fed. Cir. 01/12/18) (vacating willfulness verdict because trial court excluded from jury evidence of prior art without considering whether that prior art affected infringer’s state of mind); WBIP (Fed. Cir. 07/19/16) (aff’g increase of damages by 50%; Halo did not overturn precedent that jury decides factual aspects of willfulness, but willfulness verdict does not require enhancement).
  • Court May Decide Enhancement Without Waiting For Jury Finding On Willfulness: Not always necessary for a jury to consider willfulness before district court may exercise its discretion to enhance or not enhance damages. Exergen (Fed. Cir. 03/08/18) (non-precedential) (aff’g district court post-trial decision to not enhance damages based on assessment of Read factors, without jury having decided willfulness.)
  • Pre-Halo: Objective Prong: For Court {OR} For Court Not Jury Where Based On Matter-Of-Law Issue Or Defense; Otherwise For Jury: If court determines that infringer’s reliance on a defense was not objectively reckless, it “cannot send the question of willfulness to the jury, since proving the objective prong is a predicate to consideration of the subjective prong.” Powell (Fed. Cir. 11/14/11); see Global Traffic (Fed. Cir. 06/04/15) (non-precedential) (“the first question is for the court; the second is for the jury.”); Bard Peripheral II (Fed. Cir. 06/14/12) (“the ultimate legal question of whether a reasonable person would have considered there to be a high likelihood of infringement of a valid patent should always be decided as a matter of law by the judge,” and review is de novo.); Stryker (Fed. Cir. 03/23/15) (revised opinion after panel rehearing granted) (aff’g verdict and judgment of liability of infringement of three patents (two found infringed on Summ. J.) but rev’g willful infringement because the claim constructions, non-infringement, and obviousness defenses “were not objectively unreasonable, and, therefore, it did not act recklessly;” “objective recklessness, even though ‘predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law ….’”), granted (U.S. 10/19/2015) (Question Presented: “Has the Federal Circuit improperly abrogated the plain meaning of 35 U.S.C. § 284 by forbidding any award of enhanced damages unless there is a finding of willfulness under a rigid, two-part test, when this Court recently rejected an analogous framework imposed on 35 U.S.C. § 285, the statute providing for attorneys’ fee awards in exceptional cases?”; “Does a district court have discretion under 35 U.S.C. § 284 to award enhanced damages where an infringer intentionally copied a direct competitor’s patented invention, knew the invention was covered by multiple patents, and made no attempt to avoid infringing the patents on that invention?”); Harris (Fed. Cir. 01/17/13) (no deference to jury on objective prong) (non-precedential).
  • TIPS: