Defendants, through a motion in limine, sought to preclude plaintiffs from introducing any evidence tending to show subjective willfulness unless and until the court ruled on the reasonableness of their invalidity defense, which is the objective prong of the Seagate willfulness test. Although the plaintiffs agreed that the jury should find liability before considering willfulness, the plaintiffs argued that: (1) the patentee should not be barred from presenting evidence bearing on willfulness that may overlap with liability issues; and (2) the court may consider the objective prong of the willfulness test before, during or after the jury decides the subjective prong.

The court agreed with plaintiffs on both points. The court first noted that some of the “willfulness” evidence (copying of plaintiff’s inventions and commercial success) may be relevant to defendant’s obviousness defenses. As for the plaintiff’s second point, the court acknowledged that some district courts have suggested that it is improper to submit the willfulness question to the jury unless and until the court first decides whether plaintiffs have met their burden on the objective prong. Even so, the court noted that this rule has not been imposed by the Federal Circuit. According to Judge Crabb, such a rule would unnecessarily burden the court by requiring the jury trial to be put on hold while the court considered the objective prong.

Ultratec, Inc. v. Sorenson Communications, Inc., 3-13-cv-00346 (W.D. Wis. Oct. 3 2014) (Crabb, J.).