Willful Patent Infringement: Lingering Questions

AuthorAusten Zuege
Published in Landslide, Volume 14, Number 4, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
Willful Patent
By Austen Zuege
hat are the minimum requirements to establish enhanced
damages for patent infringement after the passage of
the America Invents Act (AIA) and the U.S. Supreme
Court’s decision in Halo, and what evidence can be presented on
this point? Post-Halo cases reveal areas of ambiguity and dispute.
Some dispute involves willfulness theories falling close to the line
between reckless conduct sufcient to establish willfulness and
merely negligent conduct that is not willful. But a lingering ambi-
guity is how 35 U.S.C. § 298 may exclude from willful patent
infringement certain conduct that might be considered reckless—
and thus willful—in other areas of tort law. For whatever reason,
§ 298 has received little attention or treatment, which has even led
to decisions contrary to that statutory provision.
A Brief History of Willfulness
Let us begin with some context for how willfulness has evolved in
patent law.
Damages enhancement is governed by 35 U.S.C. § 284,
even though the term “willful” does not explicitly appear there. In
the early 1980s, the Federal Circuit established an afrmative duty
of due care and an adverse inference of willfulness if the accused
infringer did not both obtain advice of counsel and waive privilege
to present an advice of counsel defense.2 Decades later, the Federal
Circuit abolished the adverse inference in Knorr-Bremse.3 Then it
abolished the afrmative duty of due care in Seagate, substituting
a two-prong willfulness analysis requiring “objective recklessness”
as a prerequisite.4 In the aftermath of those cases, the AIA intro-
duced § 298, which prohibits use of the failure to obtain advice of
counsel or make an advice of counsel defense to establish willful-
ness (or inducement).5
In 2016, the Supreme Court in Halo threw out the “objec-
tive recklessness” prerequisite, nding its “inelastic constraints”
insufcient to allow courts to punish “the full range of culpable
behavior.6 The Court held that “culpability is generally measured
against the knowledge of the actor at the time of the challenged
conduct.”7 Therefore, “[t]he subjective willfulness of a patent
infringer, intentional or knowing, may warrant enhanced damages,
without regard to whether his infringement was objectively reck-
The Court discussed how reckless conduct supports punitive
damages where willful intent is required while merely negligent
conduct does not, clarifying that “a person is reckless if he acts
knowing or having reason to know of facts which would lead a
reasonable man to realize’ his actions are unreasonably risky.
The abrogated “objective recklessness” threshold had allowed
classically reckless conduct to be exonerated by after-the-fact
rationalizations, which meant that some reckless conduct was
inappropriately shielded from punitive enhanced damages.10
Later Federal Circuit cases have interpreted Halo as abrogating
the “objective recklessness” requirement in a relatively narrow way
but leaving intact much other pre-Halo case law,
which presents
challenges for anyone trying to parse out the way older cases may
have been abrogated only in part but are potentially still control-
ling as to other aspects. The Federal Circuit has maintained that
“willfulness” is a question of intent involving the accused infring-
er’s state of mind that is for the nder of fact (jury) to decide,
and knowledge of the asserted patent is a prerequisite to a nding
of willfulness.13 After willfulness is established, the question of
enhancement of damages is then a question for the court (rather
than jury) to decide
—though a willfulness verdict does not auto-
matically entitle the patentee to enhanced damages.
But a court’s
discretionary moral judgment regarding enhancement does not
depend on any preceding factual nding of a particular state of
mind or level of intent of the infringer.16
District court decisions post-Halo have begun to explore the
minimum requirements to plead and then introduce evidence of
willfulness, though the Federal Circuit has not yet reached some
of the new theories denitively. These various new theories address
Image: Getty Images
Published in Landslide, Volume 14, Number 4, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
Austen Zuege is an attorney at Westman, Champlin & Koehler,
P.A. in Minneapolis, Minnesota. His practice includes patent
and trademark prosecution and litigation. He can be reached
at azuege@wck.com.
what it means to subjectively “have reason to know” that accused
conduct presents an unreasonable risk of patent infringement in
the absence of direct evidence that the accused party actually knew
about the patent and that there was a high probability its conduct
infringed, as well as the effect of the accused taking afrmative
steps to avoid learning of such facts.17
New Theories of Willful Infringement
First, a number of district courts have found “willful blindness”
to be an acceptable theory of willful patent infringement. Motiva
from the Eastern District of Texas is perhaps the most widely
known of these cases, holding that “[s]ince the Supreme Court has
explained that willful blindness is a substitute for actual knowl-
edge in the context of infringement, it follows that willful blindness
is also a substitute for actual knowledge with respect to willful
infringement.”18 Willful blindness has two basic requirements:
(1) the accused must subjectively believe that there is a high prob-
ability that a fact exists, and (2) the accused must take deliberate
actions to avoid learning of that fact; these two requirements
mean willful blindness has a limited scope that surpasses reckless-
ness and negligence.
To avoid dismissal, patentees must make
“plausible” willfulness allegations regarding both requirements
for willful blindness.20
What has generated much discussion about willfulness theories
relying on willful blindness is the role of “no patent review” corpo-
rate policies that (at least on paper) bar employees from reviewing
competitor patents.21 Yet the mere existence of such a “no patent
review” policy is not per se sufcient to plead willful blindness
for willful infringement unless there is also a plausible allegation
that the accused party subjectively believed a high probability of
patent infringement existed.
In practical terms, this means there
must be something more than simply a blanket corporate policy
that applies to any and all (competitor) patents and that “some-
thing more” must plausibly suggest a culpable state of mind with
regard to infringement of the asserted patent.
Second, some courts have addressed other theories—distinct
from “willful blindness”—that an accused infringer should have
reasonably known about the asserted patent. For example, district
courts are divided about whether actual knowledge of an unas-
serted family-related patent coupled with an allegation that the
accused should have investigated that patent family to discover
the asserted patent—such as a broader continuation or broadening
reissue—is sufcient to support willfulness.23 At times, these other
theories appear uncomfortably close to the old, abrogated afr-
mative duty of due care.
These other theories seem less stringent
and more expansive than willful blindness, partly because they
fall close to the boundary between negligence and recklessness
but also because decisions on these theories often contain little or
no discussion of why the accused had reason to know that there
was infringement of a later-issued patent and not merely that the
later-asserted patent existed.25
Statutory Limits on Evidence of Willfulness under
§ 298
But what about § 298? A curious feature of many post-Halo will-
fulness cases is how little that section introduced by the AIA is
discussed or even cited by courts when dealing with issues to
which it directly relates, namely the relevance of evidence under
the second Read factor: “whether the infringer . . . investigated
the scope of the patent and formed a good-faith belief that it was
invalid or that it was not infringed.”26 This is most troubling when
courts proffer reasoning based on case law that was abrogated by
§ 298 (if not also by Seagate). Section 298 states:
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.27
There can be no question that § 298 excludes certain evidence
from use to prove willfulness, including (1) the failure to consult
an attorney and (2) the decision to maintain privilege over advice
received from counsel. Yet an asymmetrical framework remains:
the accused infringer is still free to obtain a legal opinion and later
voluntarily present an advice of counsel defense based on that legal
advice,28 but a “decision not to seek an advice-of-counsel defense
is legally irrelevant under 35 U.S.C. § 298.29
The key effect of § 298’s framework has to be that “having
reason to know” for a (recklessness) willfulness theory must be
limited to what the accused infringer reasonably should have
known at the time without the assistance of counsel. The scope
of the accused party’s (subjective) knowledge of the intricacies of
patent law will vary considerably, though. For instance, lay parties
might reasonably believe that broader later-issuing patents or
reissues are not likely or that something like prosecution laches
would apply to them.
This subjective knowledge may be difcult
to even infer from circumstantial evidence in situations in which
the accused did obtain advice of counsel but chooses not to waive
privilege and not to make an advice of counsel defense based on
that advice. And mere speculation on this point is generally inad-
equate. Moreover, as one district court held, attempts to suggest
what the accused knew based on privileged communications not in
evidence may be improper as a “disguised” attempt to circumvent
the limits set forth in § 298.
In a somewhat counterintuitive way,
§ 298 provides two distinct incentives to obtain advice of counsel
because an accused party can either waive privilege in such advice
and present an advice of counsel defense or maintain privilege and
later potentially shield certain state of mind inquiries or inferences
implicating that (maintained) privilege.32
Does a Duty of Due Care Still Exist? And Does It
Seagate abrogated the afrmative duty of due care; but when Halo
later abrogated the “objective recklessness” standard, a question
arose as to the impact of Halo’s abrogation of the abrogation of the
duty of due care.33 The Federal Circuit has not explicitly weighed
in on this point, and no Federal Circuit case since Halo mentions

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