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October 22, 2021by Richard Treanor

Recently, the Federal Circuit, in SRI Int’l v. Cisco Sys., 2020-1685 (Fed. Cir. Sep. 28, 2021), clarified the confusion caused by an earlier remand to the district court, in which the Federal Circuit instructed the district court to determine whether the infringer’s conduct met the “wanton, malicious, and bad-faith behavior required for willful infringement.” The district court, surprised by this instruction (as was the patent bar), nevertheless proceeded and found the infringer’s conduct insufficient to meet this new, heightened standard.

On appeal for the second time, the case returned to the same three-member panel of the Federal Circuit, which clarified that it was not their intent to create a heightened requirement for willful infringement and reiterated the standard for willful infringement summarized last year in Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367 (Fed. Cir. 2020): “willfulness requires a jury to find no more than deliberate or intentional infringement.” Additionally, the Federal Circuit explained that the heightened standard originally cited in remanding the case to district court was meant to refer to conduct warranting enhanced damages, available after willfulness is established.

Thus, the test for willful infringement remains as it was formulated in the U.S. Supreme Court’s 2016 decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016). Importantly, the Federal Circuit in SRI Int’l. left unchanged the common defense to willful infringement: obtaining an opinion of counsel confirming that an activity or product does not infringe a patent and/or confirming that a patent is invalid and/or unenforceable.

Judges: LOURIE, O’MALLEY, STOLL


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November 12, 2020by Mamoru Kakuda

2020年10月23日、Induced infringementにおけるintentの有無は、主観的な心の状態によって判断され、その誘引行為 (induced conduct) が侵害行為でないと信じる客観的合理性があるかどうかでは判断できないことを明らかにしたCAFCの判決が出ています (TecSec, Inc. v. Adobe, Inc. (Fed. Cir. Oct. 23, 2020)) 。