In Part 1 of this article, we discussed the background of section 298 of the America Invents Act (AIA) and noted that this section of the AIA only applies to patents issued on or after Sept. 16, 2012. With respect to induced infringement, most patents asserted today issued prior to Sept. 16, 2012, and therefore the court is required to follow the 2008 Broadcom decision of the Court of Appeals for the Federal Circuit rather than Section 298. With respect to charges of willfulness, Section 298 of the AIA only affects the determination of willfulness and not, should willfulness be found, whether enhanced damages should be awarded.
The Federal Circuit, discussing willfulness in its 2011 Spectralytics decision, stated that the district court applied Seagate “in a more rigorous manner than is appropriate” when it excluded evidence that defendants failed to seek an opinion of counsel or that defendants sought an opinion of counsel but did not disclose it. The Federal Circuit held that, while Seagate removed the presumption of willful infringement flowing from an infringer’s failure to exercise due care to avoid infringement, Seagate did not change those considerations relevant to enhanced damages once willful infringement has been found. Thus, after willful infringement is established, it is not improper to consider the infringer’s failure to obtain an opinion of counsel in an enhanced damages determination.