In this case, [the patent holder] argues that [the alleged infringer] willfully infringed the claims of [the patent holder]’s patent.

The issue of willful infringement relates to the amount of damages [the patent holder] is entitled to recover in this lawsuit.  If you decide that [the alleged infringer] willfully infringed the claims of [the patent holder]’s patent, then it is my job to decide whether or not to award increased damages to [the patent holder].  You should not take this factor into account in assessing the damages, if any, to be awarded to [the patent holder].

To prove willful infringement, [the patent holder] must persuade you that it is highly probable that [before the filing date of the complaint], [the alleged infringer] acted with reckless disregard of the claims of [the patent holder]’s patent.  To show “reckless disregard,” [the patent holder] must satisfy a two-part test: the first concerns [the alleged infringer]’s conduct, the second concerns [the alleged infringer]’s state of mind.

When considering [the alleged infringer]’s conduct, you must decide whether [the patent holder] has proven it is highly probable that [the alleged infringer]’s conduct was reckless; that is, that [the alleged infringer] proceeded with the allegedly infringing conduct with knowledge of the patent, and in the face of an unjustifiably high risk that it was infringing the claims of a valid and enforceable patent. Because this is an objective issue, the state of mind of [the alleged infringer] is not relevant to it.  Legitimate or credible defenses to infringement, even if ultimately not successful, demonstrate a lack of recklessness.

If you conclude that [the patent holder] has proven that [the alleged infringer]’s conduct was reckless, then you need to consider the second part of the test.  You must determine whether [the patent holder] proved it is highly probable that the unjustifiably high risk of infringement was known or so obvious that it should have been known to [the alleged infringer].  In deciding whether [the alleged infringer] satisfied the state-of-mind part of the test, you should consider all facts surrounding the alleged infringement including, but not limited to, the following:

  1. whether [the alleged infringer] acted in a manner consistent with the standards of commerce for its industry;
  2. whether [the alleged infringer] intentionally copied without a reasonable basis a product [method] of [the patent holder] covered by one or more claims of the patent, as distinguished from trying to “design around” the patent by designing a product [method] that [the alleged infringer] believed did not infringe those claims.


Willful Infringement Instructions

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Mike Ervin

Mike Ervin - Cost Effective Small Business Patent Protection.

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