12. Willful Infringement
12.0 Willful Infringement—Generally
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Practice Note: The following Instruction should be given only if the patent owner contends willful infringement and has introduced sufficient evidence to support this contention.
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If you find that it is more likely than not that [the Defendant] infringed a valid claim of [the Plaintiff]’s patent, either literally or under
the doctrine of equivalents, then you must also determine whether or not [the Defendant]’s infringement was willful.
To show that [the Defendant]’s infringement was willful, [the Plaintiff] must prove by a preponderance of the evidence that [the Defendant] knew of [the Plaintiff]’s patent and intentionally infringed it. For example, you may consider whether [the Defendant]’s behavior was malicious, wanton, deliberate, consciously wrongful, flagrant, or in bad faith. However, you may not find that [the Defendant]’s infringement was willful merely because [the Defendant] knew about the patent, without more. In determining whether [the Plaintiff] has proven that [the Defendant]’s infringement was willful, you must consider all of the circumstances and assess [the Defendant]’s knowledge at the time the challenged conduct occurred.
If you determine that any infringement was willful, you may not allow that decision to affect the amount of any damages award you give for infringement.
Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016); WesternGeco L.L.C. v. Ion Geophysical Corp., No. 2013-1527 (Fed. Cir. Sept. 21, 2016); WBIP, LLC v. Kohler Co., No. 2015-1038, 2016 WL 3902668, at *15 (Fed. Cir. July 19, 2016).
12.1 Willful Infringement—Reliance on Legal Opinion
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Practice Note: The following Instruction should be modified based on whether or not the Defendant claims reliance on a legal opinion to rebut willfulness.
The AIA eliminated failure to obtain an opinion of counsel as a factor in determining the existence of willful infringement. See 35 U.S.C. § 298 (“The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.”). Although § 298 originally applied only to post-AIA patents, a subsequent technical correction made § 298 applicable in all patent cases filed after January 14, 2013. See Pub. L. No. 112-274, § 1(a), 126 Stat. 2456 (2013).
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[If the Defendant relies on a legal opinion]
The Defendant] contends that its conduct was not willful because it relied on a lawyer’s opinion that [[[the Defendant]’s [[product] [method]] [did not infringe the asserted claims of the [abbreviated patent number] patent] [the asserted claims of the [abbreviated patent number] patent were [invalid] [unenforceable]]]. In considering the totality of the circumstances as to whether [the Defendant] acted willfully, you may consider as one factor whether [the Defendant] reasonably relied on a competent legal opinion.
[If the Defendant does not rely on a legal opinion]
You may not assume that merely because [the Defendant] did not obtain a lawyer’s opinion, that the opinion would have been unfavorable. The absence of a lawyer’s opinion is not sufficient for you to find that [the Defendant] acted willfully. Rather, the issue is whether, considering all the circumstances, [the Plaintiff] has established that [the Defendant]’s conduct was willful.
35 U.S.C. § 298; Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1347-48 (Fed. Cir. 2011); Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1313 (Fed. Cir. 2010); In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc).
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The contributions of the following attorneys to the drafting and commenting on of these Model Jury Instructions are gratefully acknowledged.
The 1997 version