Aipla model Patent Jury Instructions

12. Willful Infringement

12.0 Willful Infringement–Generally

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.

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, 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

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).

[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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6. Acknowledgments

The contributions of the following attorneys to the drafting and commenting on of these Model Jury Instructions are gratefully acknowledged.

The 1997 Version

Mark Abate Ken R. Adamo Joseph Z. Allen Robert L. Baechtold Russell J. Barron Christopher R. Benson David J. Brezner Henry L. Brinks Jeffrey N. Costakos John F. Delaney Bradford J. Duft Donald R. Dunner Richard D. Fladung Floyd A. Gibson

Eileen M. Herlihy Roy E. Hofer Michael K. Kirschner Steven S. Korniczky William E. Lahey Bradley G. Lane Robert C. Laurenson Gary H. Levin Jeffrey I.D. Lewis Brent P. Lorimer Don W. Martens Alice O. Martin Clifton E. McCann Gaynell C. Methvin

Frederick G. Michaud, Jr. Jeffrey D. Mills John B. Pegram Michael F. Petock Peter H. Priest Jerrold B. Reilly Daniel M. Riess William C. Rooklidge Alan J. Ross John M. Skenyon Allan Sternstein Lawrence M. Sung Jennifer A. Tegfeldt David C. Wright

The 2005 version

Kley Achterhof Stephanie Barbosa Kelli Deasy Denise DeFranco Barbara Fiacco Katherine Fick Mareesa Frederick Stephanie Harris Wendell Harris Andrew Lagatta Christy Lea Kalun Lee

Rashida MacMurray Steven Maslowski William McGeveran George Medlock Mary Beth Noonan Matthew Pearson Mark Schuman Steve Sheldon Sean Seymour John Skenyon Stephen Timmins Hema Viswanathan

Aaron Weiss Elizabeth Wright Jeremy Younkin

The 2007 version

Aaron Barlow Dave Bennett Elaine Hermann Blais Walter Bookhardt Scott Breedlove Patrick Coyne John Crossan Elizabeth Day Conor Farley John Hintz Scott Howard Kirby Lee Gregory Lyons

Joshua Masur Clifton McCann Tim Meece Heather Mewes Joe Miller Kenneth Mitchell John Moran Jeff Nichols Scott Pivnick Mirriam Quinn Amber Rovner Michael Sacksteder John Scheibeler

John Schneider Mark Schuman Jeff Sheldon John Skenyon Steve Swinton Tim Teter Kurt Van Thomme David Todd Michael Valek Alastair Warr Adam Wichman Daniel Winston Steven Zeller

The 2012 version

Matthew Blackburn Elaine Blais Carrie Beyer Gary Buccigross Brian Butler Justin Cohen Danielle Coleman Craig Countryman Tom Davison David DeBruin Evan Finkel Glenn Forbis Nicolas Gikkas

Aleksander Goranin Angie Hankins Ben Hanrahan Ben Hodges Lisa Kattan William Lenz Greg Lewis Robert Matthews John Moy Paul Overhauser Ajeet Pai John Pinkerton Scott J. Pivnick (chair)

William Poynter Woody Pollack Joe Richetti Spencer Ririe John Skenyon Laura Smalley Andrew Stein Steve Swinton Lynn Tyler Jennifer Vein, Smr. Assoc. Jose Villareal Steven Zeller

The 2014 version

Ken Adamo Aden Allen Alan Anderson Matt Bernstein Felicia Boyd (chair) Joshua Brady Cheryl Burgess Kristin Cleveland Patrick J. Coyne David De Bruin Denise DeFranco Larry DeMeo Alper Ertas Peter Forrest Aaron Frankel Gary Frischling Mel Garner Derek Gilliland James Goggin David Harth Anthony Hartmann

Rudy Hofmann Daniel Holmander Travis Jensen Neil Jones James Kamp Karen Keller Nicholas Kim Suzanne Konrad Samuel Lewis David Moore Jeffrey Mote Don Niles Eric Osterberg Paul Overhauser Ajeet Pai Henrik Parker Ken Parker Roger Parkhurst John Pegram Rafael A. Perez-Pineiro Scott J. Pivnick

Connie Ramos Russell Rigby Spencer Ririe Victor Rodriguez Reyes David Ruschke Jeffrey Sadowski Javier Sobrado Kim Schenk Michael Strapp Mark Supko Stephen Swinton Jamaica Szeliga Peter Toren Christopher Tokarczyk Steven Trybus Colette Verkuil Mark Whitaker A. Robert Weaver Steven McMahon Zeller RJ Zayed

The 2016 version

Aden Allen (co-chair) Gregory F. Ahrens Alan M. Anderson Peter Ayers William Blonigan Felicia Boyd Eric R. Chad Kristen Cleveland Robert Counihan Tom Davison Aaron M. Frankel Gary Frischling Darlene Ghavimi Derek Gilliland James Goggin

Chris Granaghan Alexander Hadjis Monplaisir Hamilton Jeffrey T. Han Anthony Hartmann Gordon K. Hill James Kamp Jim Lennon Noah Lerman Lily Lim John Lu Robert D. Mason Colette Reiner Mayer Daniel Melman John P. Moran Bailey Morgan, law student Jeffrey G. Mote

Don Niles Paul Overhauser Ajeet Pai (co-chair) Henrik Parker Peter Peckarsky Mark Privratsky Mark H. Remus Joe Richetti Victor Rodriguez Reyes Jeff Sadowski Kim Schenk John E. Schneider Craig Summers Mark M. Supko Steven R. Trybus Terry E. Welch

1^ If the litigation involves a patent governed by the America Invent Act (AIA), prior art is art that was effectively filed or published before the filing of the application or patent.

2^ This section and below should be modified in accordance with the patent owner’s infringement contentions, e.g., where the doctrine of equivalents is not at issue.

3^ This section and below should be modified in accordance with the Defendant’s defenses, e.g., where the Defendant has opted to not allege non-infringement or invalidity.

4^ AIPLA drafted these Model Jury Instructions assuming the litigated issues included in the Instructions will be submitted to the jury. AIPLA is not suggesting that the parties have a right to a jury trial on all issues included in the Instructions. The Instructions used in your case should be tailored to the specific issues being litigated.

5^ Give Instruction 2.2 only if the case involves means-plus-function claims. In Instruction 2.1, the court provides its construction of any terms for which a construction is needed. This should include its construction of any limitations governed by 35 U.S.C. § 112 ¶ 6, or § 112(f). Where the limitation uses the phrase “means for” or “step for,” a jury may nonetheless incorrectly conclude that the limitation includes any component or any step that accomplishes the specified function. To avoid confusing the jury, we recommend use of Instruction 2.2. Where the limitation is governed by 35 U.S.C. § 112 ¶ 6, or § 112(f), but does not use the phrase “means for” or “step for,” consideration should be given to whether Instruction 2.2 is unnecessary.

6^ Give instructions on joint infringement and active inducement to infringe only if these issues are raised and are adequately supported by the evidence.

7^ This Instruction should be given only if infringement of a means-plus-function or step-plus-function claim is asserted and there is sufficient evidence to support this assertion.

8^ This additional Instruction on equivalents should be given only if infringement under the doctrine of equivalents is properly before the Court.

9^ This Instruction should be given only if the Defendant has identified sufficient evidence that this issue is genuinely disputed.

10^ Although “ensnarement” is a question of law, a court may obtain an Advisory Verdict on this question necessitating inclusion of Instruction 3.7. In particular, the Federal Circuit has held that the question of whether the scope of a claim under the doctrine of equivalents ensnares the prior art is “ultimately . . . a question of law for the court, not the jury, to decide,” but “[i]f a district court believes that an advisory verdict would be helpful, and that a ‘hypothetical’ claim construct would not unduly confuse the jury as to equivalence and validity, then one may be obtained under Federal Rule of Civil Procedure 39(c).” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1324 (Fed. Cir. 2009).

11^ This Instruction should be given only if the Defendant has identified sufficient evidence that this issue is genuinely disputed.

12^ This Instruction should be given only if the Defendant has identified sufficient evidence that this issue is genuinely disputed.

13^ In cases where the patentee is unable to determine the process by which the product at issue is made, and the prerequisites of 35 U.S.C. § 295 are satisfied, the presumption of Section 295 may also need to be included in this Instruction, requiring the accused infringer to rebut a presumption that the product was made by the patented process.

14^ For simplicity, except for providing when a claim shall be evaluated under pre-AIA/post-AIA law in terms of “priority date,” this Instruction refers to “filing date” of the patent. Where a patent is entitled to a priority date earlier than the filing date, the Instruction may need to be modified accordingly.

15^ In cases where priority of invention is an issue to be submitted to the jury, further Instructions will be required. For example, the jury will need to consider not only the dates when the respective inventions were conceived, but also when the inventions were reduced to practice. An inventor who claims to be the first to conceive of a prior invention but was the last to reduce to practice, must also show reasonable diligence from a time just before the other party entered the field until his own reduction to practice in order for the “prior invention” to anticipate the claimed invention in suit.

16^ If abandonment, suppression or concealment is at issue in the case, these terms should be defined for the jury. See Dow Chem. Co. v. Astro-Valcour Inc., 267 F.3d 1334, 1342 (Fed. Cir. 2001); Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756, 761-62 (Fed. Cir. 1995).

17^ Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1338 (Fed. Cir. 2013); see also Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360-61 (Fed. Cir. 1998).

18^ If there is an issue of fact regarding the adequacy of [the Patentee’s marking], additional Instructions will be required.

2017 Model Patent Jury Instructions