Willful Patent Infringement – Did it matter?

As a patent litigator and patent litigation book author, I read lots of cases. And everyone once in a while, there is one that just pops out because it’s interesting. As a patent holder, you may one day assert your patent in court. Typically you claim the defendant infringed the patent. You stitch together your legal theory (with our help) and claim that the infringement occurred. You may also assert that the infringement was willful. Without delving too much into the precise legal construct of willfulness, in plain English, willfulness is akin to some real culpable bad conduct. That is, you claim that the infringer was real deliberate, he intended to infringe, or that essentially had recklessness in the infringing actions. In short, the infringer acted really badly and needs to be taught a lesson. Willfulness in patent law can be used in a variety of different ways, but usually to the same end(s). The patent holder wants more money, more punishment, throwing the infringer off the market, and possibly getting its legal fees and costs back. After all, if the infringer was a pretty bad actor, the patent holder should be made whole again.

So now imagine you litigated the case. You spent huge monies proving the case. In addition, you explored the little nooks and crannies in the case and found some damning evidence that the infringer was a really bad actor. During the trial, you actually prove to a jury that the patent infringement occurred and that the infringer acted quite badly. (Remember, this article is a plain English explanation of willfulness and is not meant to be a textbook on what will or won’t happen). The jury awards you about $100 million in damages and says you proved willfulness. You expect, therefore, that your base award will be increased (called “enhanced” damages), the ongoing royalty rate going forward ought to be higher, and you expect to be reimbursed for your reasonable attorneys’ fees and costs (because the case is an “exceptional” case). After all, you are a big winner.

In one recent case, it didn’t work out. Despite finding willfulness by the jury, the judge nonetheless decided to not give any extra bump-ups or award reimbursement of fees. It is well beyond the scope of this article to lay out the law of “enhanced” damages and “exceptional” case theories for fees/costs. You can call me or read my other books or articles on these subjects. Needless to say, even though the jury found willfulness that survived post-trial motions, the judge still did not extra-award/reward/reimburse the patent holder. In other words, the patent holder had nothing really to show for its willfulness win. While I am not suggesting the judge did anything wrong nor that the patent holder is a real loser, rather, it is not a foregone conclusion, as might be expected, that the win on willfulness will or must result in some extras.

In Vectura v. GSK, the judge outlined the various post-trial motions and his decisions as to why despite the willfulness ruling that he did not award any extras. Particularly, with respect to enhanced damages (to increase the award on top of the base damages award), the judge said that the U.S. Supreme Court “Halo” case did not require an automatic enhancement. Rather “Halo” said that it’s still within the trial court discretion to increase damages. He didn’t. Further, the judge said that whilst willfulness can be a basis for fees/costs under the “exceptional” case theory, still the judge did not award fees/costs. He said the case was not exceptional (enough?). And the patent holder was awarded an ongoing royalty but wanted a higher percentage based on the willfulness. The judge said no.

I don’t have any opinion, and nobody should read into this article any opinion, about whether the judge was right or wrong, or whether the appeals court will affirm or remand. Rather, I point out this case simply because it does illustrate that the patent law and litigation are complex and unpredictable. If you want to read the cases, I suggest you look at: Vectura v. GSK, 2019 WL 4276794 (10 Sept. 2019) and the denial of extras opinion at 2019 WL 4346502 (12 Sept. 2019).

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