Willful Infringement

By: Josh Sloat

What is willful infringement?

Willful infringement is a patent law concept that applies when someone infringes a patent knowingly or with reckless disregard for the patent holder’s rights. It goes beyond accidental infringement, often involving a deliberate choice to use protected work despite awareness of the rights holder. With unintentional infringement, the infringer can still be required to pay damages, negotiate a license, or face an injunction to halt the infringing activities. If the infringement is deemed willful, however, this can lead to significantly increased damages, sometimes up to three times the original amount! 

This is something that patent holders need to be keenly aware of – both offensively and defensively. If found for infringement, is simply knowing about the competitor’s patent enough? What if it turned up in search results when examining prior art for your own invention? On the other side, if you’ve discovered that a competitor is infringing on you, what steps should you take to ensure that they’ve been clearly put on notice? The answers to these questions could mean millions. 
​

From Mistake to Misconduct

​Unfortunately, like with a lot of things in the world of patenting, the answers aren’t always as obvious as we’d like them to be. The black-and-white statute from the 1952 Patent Act that governs enhancing damages doesn't actually have any limits or conditions on it. Eventually, as the panel will discuss – and for any regular listener, this might sound familiar – the Supreme Court came along and added its own conditions, but with the kind of we’re not really going to be helpful level of specificity we’ve come to expect from the high court. Looking at you, Alice. 

But in fairness, this is an inherently complicated issue and one that, as you’ll see today, gets at the heart of one of the fundamental tensions of the patent system – disclosure for exclusivity. You get exclusive rights by disclosing your invention so that other people can improve upon it, and society benefits. Not hampering innovation with exclusive rights depends on being aware of the inner workings of the inventions of others. But the patent system is supposed to reward competition — not copying. So designing around is fair competition. Accidental overlap is unfortunate but civil, and has normal remedies. But deliberate disregard is something else entirely. So understanding when infringement crosses the line from mistake to misconduct – and penalizing accordingly – is really key to the whole system. 
​

Guest Co-host: Tamany Vinson Bentz

While the missteps can happen very early in the process, how they shake out in the wash happens much further down the road and in the courtroom, so we’ve enlisted the help of a litigation expert to co-host this episode alongside Patently Strategic regular, David Jackrel. This excellent pairing helps frame the conversation from the perspective of pre-prosecution considerations all the way to how judges and juries have been ruling on cases involving potential willful infringement. Tamany Vinson Bentz is our guest co-host today. Tamany is the founder of California IP Law, where she currently focuses on developing customized IP portfolios for businesses of all sizes. Prior to managing her own firm, she spent 20 years as a litigator in big law as a partner at both Venable and DLA Piper. 

Episode Overview

Tamany and Dave lead today's discussion with our all-star patent panel, delving deeply into all things willful infringement. Along the way, they discuss:

• Willful infringement prior to two 2016 SCOTUS cases.
• How the SCOTUS cases shaped assessment of willful infringement.
• How this has been playing out in more recent cases, and what has and has not been viewed as willful or egregious.
• And some practical tips on how and where to communicate notices if you feel like your patent rights are being infringed.

​

How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
​

Mossoff Minute: Apple's Predatory Infringement

In this month’s Mossoff Minute, Professor Adam Mossoff discusses Apple’s predatory infringement practices that have once again been put on full display in the most recent chapter of its long-running patent infringement dispute with PanOptis. 

Resources.

Related Episodes

• Crafting Quality Patents. The ability to collect enhanced damages also depends a lot on the quality of your patent.
• Patent Wars. More in-depth discussion around predatory infringement and some of the reform bills mentioned in this month's Mossoff Minute.
• Dealing with Rejection. Prosecution-related patent rejections come up in today's discussion. This episode breaks down the types of rejections and how to both avoid and overcome them. 
• Patent searching. An overview of prior art, patent searching, and practical tips from an industry expert.

Related Reading

• Patent Anatomy. This episode hits on the specification and claims, and the importance of what’s captured in each for making sure your patent actually covers your invention.

Transcripts​
We're providing computer-generated transcripts for improved accessibility and additional reference opportunities.

​Slides
For the visual learners out there, we also like to make our presenter slides available for your reference.​