The Federal Circuit recently upheld a finding of willful infringement in a case in which enhanced damages could approach one billion dollars. Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. (Fed. Cir. 2015). In an earlier appeal in the same dispute, the Federal Circuit refined the two-part test for willfulness set forth in In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007). To satisfy the first prong, a patentee must demonstrate to the court that the accused infringer acted despite an objectively high likelihood that it was infringing a valid patent. To satisfy the second prong, the patentee must then prove to a jury that the objective risk was known or obvious to the accused infringer, a subjective determination.
The Bard decision, and the large potential damages resulting from it, demonstrate that willful infringement is still very much alive. It remains important for companies not only to conduct IP due diligence before releasing products, but also to make sure that they seek and obtain legal opinions where necessary to defend on the basis of the subjective prong of the test and even bolster their position on the objective prong by framing arguments in a succinct manner for the court. A factually and legally sound opinion remains the single best way to refute an assertion of willful infringement.