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Patentee falls short on proving willful infringement

August / September 2021 IP Newsletter

The U.S. judicial system acknowledges that patent infringement is bad — and willful patent infringement is even worse. So much so that a finding of willful infringement allows a court to increase damages up to three times the amount assessed by the jury. Willfulness isn’t easy to prove, though, as one patentee recently discovered.

Blood feud

Bayer Healthcare LLC owns a patent on certain forms of a protein, produced by the liver, that’s useful in treating hemophilia. The protein has a short half-life, though, so it must be administered frequently. The patent covers a process that increases the half-life, increasing convenience and reducing treatment costs.

Bayer sued Baxalta Inc. for patent infringement. A jury found that the defendant had infringed the patent and Bayer was entitled to reasonable royalty damages.

However, the trial court hadn’t sent the question of willful infringement to the jury. Rather, it held that Baxalta’s conduct didn’t meet the requirements for willfulness “as a matter of law,” meaning no reasonable jury could find otherwise in light of the evidence.

Both parties appealed. Bayer contested the trial court’s judgment as a matter of law. It argued that it had presented sufficient evidence of willfulness at trial to send the question to the jury.

Willful infringement

As the U.S. Court of Appeals for the Federal Circuit explained, a patentee that wishes to establish willful infringement must show that the defendant had a specific intent to infringe at the time of the conduct in question. The U.S. Supreme Court has, in different cases, described the type of conduct that warrants enhanced damages as willful, wanton, malicious, bad faith, deliberate, consciously wrong, flagrant or “characteristic of a pirate.”

Bayer’s evidence included testimony from employees of Baxalta about their awareness of the patent application that led to Bayer’s patent. It also contended that the jury heard evidence showing that Baxalta:

The Federal Circuit, however, was unconvinced. It found that Bayer’s evidence merely demonstrated Baxalta’s knowledge of Bayer’s patent and its direct infringement of the patent. That wasn’t enough to get it across the finish line for willful infringement.

A bitter pill

Knowledge of the patent and evidence of infringement are, the court said, necessary but insufficient for a finding of willfulness. Deliberate or intentional infringement — which the plaintiff didn’t establish — is also required.

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