Federal Circuit Ruling Shows Appetite for Revisiting Willfulness

January 13, 2015

​Fenwick & West patent litigation chair Mike Sacksteder was quoted by Law360 regarding an appellate trend he said could “change the dynamic significantly" in many patent lawsuits.

Questions about the proper standard for “willful” infringement surfaced again in the Federal Circuit’s Jan. 13 decision in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

While concurring with the panel’s 2-1 affirmation of the lower court’s finding of willful infringement, Judge Todd Hughes also called for an en banc review of the Federal Circuit’s willfulness standard set by Seagate in light of two 2014 decisions from the U.S. Supreme Court.

"Now we have two judges who have clearly stated that the Seagate approach to willfulness needs to be revisited," Sacksteder told Law360, referring to a similar opinion from Circuit Judge Kathleen O'Malley in Halo Electronics, Inc. v. Pulse Electronics Corporation.

"The more buy-in you get,” Sacksteder continued, “the more likely the court is to take the issue en banc to address it."

According to Law360, if the Federal Circuit were to apply the Supreme Court’s April 2014 holdings from Octane Fitness and Highmark to the willfulness standard, it could become easier for patent owners to prove willful infringement and recover enhanced damages.

"If we do get a critical mass of Federal Circuit judges who think they need to address this issue, it could change the dynamic significantly in a lot of patent lawsuits," Sacksteder said.

He also noted the Federal Circuit agreed last month to an en banc review looking at whether a recent Supreme Court decision limiting laches defenses in copyright cases applies to patent cases as well.

"It shows the Federal Circuit is really paying attention to what the Supreme Court has done recently, and is starting to rethink what they've done in the past to make sure it's consistent with what the Supreme Court has done," Sacksteder said.

The full article is available through the Law360 website (subscription required).