Addressing the propriety of the trial court’s jury instruction regarding willful infringement, the US Court of Appeals for the Federal Circuit found that descriptors such as “egregious behavior” and whether an infringer is “worthy of punishment” are inappropriate for a jury instruction on willful patent infringement, but ultimately found that the instruction was not legally erroneous. Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc., Case Nos. 2018-2215, 2018-2254 (Fed. Cir. Jan. 13, 2020) (Dyk, J.) (Reyna, J. concurring-in-part, dissenting-in-part).

Eko Brands asserted a claim of patent infringement against Adrian Rivera Maynez Enterprises (ARM). Based on the district court’s claim construction, ARM stipulated to infringement, and the case went to trial on the issue of damages.

Before trial, both parties agreed to use the Federal Circuit Bar Association’s National Patent Jury Instruction No. 4.1 for willful infringement. The pattern instruction included the following relevant language:

…Willfulness requires you to determine whether Eko proved that it is more likely than not that the infringement was especially worthy of punishment. You may not determine that the infringement was willful just because ARM knew of the Eko 855 patent and infringed it. Instead, willful infringement is reserved for only the most egregious behavior, such as where the infringement is malicious, deliberate, consciously wrongful, or done in bad faith….

The instruction also listed various factors that the jury may consider, including evidence of copying, a reasonable belief of invalidity or non-infringement, design around attempts, and attempts to conceal infringement.

Shortly before deliberation, Eko objected to the phrases “especially worthy of punishment” and “willful infringement is reserved for only the most egregious behavior,” claiming the phrases required the jury to make a legal conclusion as to whether damages should be enhanced, rather than a factual determination of whether the infringement was willful. The district court responded by removing the phrase “only the most” from the instructions. After the jury returned a verdict of no willful infringement, Eko appealed.

Eko challenged the jury instruction and the ultimate finding of no willful infringement. The Federal Circuit first acknowledged the distinction between the factual finding of willfulness and the legal question of enhancement. “[T]he issue of punishment by enhancement is for the court and not the jury. [This] question of enhanced damages is addressed by the court once an affirmative finding of willfulness has been made.”

The Court went on to agree that the jury instruction contained language that in isolation was erroneous. Willfulness requires only that the jury find deliberate or intentional infringement, “[q]uestions of whether an accused patent infringer’s conduct was ‘egregious behavior’ or ‘worthy of punishment’ are therefore not appropriate for jury consideration.”

Despite this erroneous language, the Court took a more holistic approach to arrive at its ultimate conclusion that the instruction was not legally erroneous. The Court indicated that, taken as a whole, the jury instruction provided reasonable clarity as to the correct test for willful infringement. In support, the Court noted that the inclusion of the phrase “egregious behavior” merely clarifies that willful infringement can be “deliberate.” Furthermore, the list of factors for consideration served to orient the jury on the issue of “intentional” (i.e., willful) conduct. Taken as a whole, the Court found that the trial court provided an adequate test for willfulness and affirmed.

In dissent, Judge Reyna found error in the district’s claim construction and would have urged reversal of the summary judgement ruling and a remand to the district court.