Willful Infringement
In designing medical devices or developing new products in the biotech industry, patent review is part and parcel of the due diligence process prior to committing resources into a project. Increasingly the engineers or scientists either by themselves or in consultation with IP professionals, have to make some kind of freedom-to-operate determination. Often times such decisions are subjective. The recent ruling by the United States Court of Appeals for the Federal Circuit on "willful infringement" could make things a little easier for the engineers and scientists....
For the past 24 years the standard for "willful infringement" required the patent owners merely to show that the infringer knew about the patent and failed to take the necessary step to avoid infringement. This standard has shifted towards a higher burden of prove when the United States Court of Appeals for the Federal Circuit ruled on some discovery issues (process of collecting evidence before trial) from a patent infringement case brought against Seagate by MIT and Convolve. With this new ruling, the proof of "willful infringement" now requires proof that an accused infringer "acted despite an objectively high likelihood that its actions constituted infringement of a valid patent"
This recent ruling means that scientists and engineers involved in developing new products have a little more room to maneuver. On the other hand, patent owners will have a more difficult task of proving "willful infringement" to collect punitive damages.
Links:
You can read the whole decision here.
The patents involved in the lawsuit are:
What did Wall Street Journal said?
