The test for willfulness is distinct and separate from the factors guiding a district court’s discretion regarding whether and by how much to enhance damages in light of a willfulness finding.

I4I Ltd. Partnership & Infrastructures For Info. Inc., v. Microsoft Corp., No. 2009-1504 (Fed. Cir. March 10, 2010).

The patentee sued an accused infringer alleging certain custom editing features of its software infringed the patent-in-suit. The jury found the alleged infringer liable for willful infringement and rejected the accused infringer’s argument that the patent was invalid, and awarded $200 million in damages to the patentee and a permanent injunction. The district court denied the alleged infringer’s motions for judgment as a matter of law (“JMOL”) on infringement, validity, and willfulness and a motion for a new trial. The alleged infringer’s motion for a panel rehearing was granted for the limited purpose of addressing willfulness. This summary addresses the revised opinion addressing willfulness and our previous summary of December 30, 2009 reviews the other issues appealed to the Federal Circuit.

In reviewing the denial of the infringer’s JMOL on willfulness, the Federal Circuit noted the alleged infringer’s brief confused the issues of enhanced damages and willfulness. Whether the district court abused its discretion in weighing the Read factors for enhanced damages in light of a willfulness finding is a separate inquiry from whether there was sufficient evidence for a finding of willfulness.

Whether infringement is willful is a question of fact. In this case, the patentee presented sufficient evidence to prove both the objective and subjective prongs of the Seagate standard for willfulness. The patentee presented evidence from which the jury could have reasonably inferred that the alleged infringer knew of the patent-in-suit. Further, there was no evidence that the alleged infringer made a good faith effort to avoid infringement or took any remedial action to avoid infringement. Therefore, it would have been reasonable for the jury to infer that the alleged infringer continued producing, marketing, and promoting its custom editor despite an objectively high likelihood the product infringed the patent-in-suit.

A copy of the opinion can be found here.