Terms and Concepts


Another hot topic in concurrent reexamination and litigation is the use of reexaminations as a defense against willful infringement.  In In re Seagate Technology, LLC [In re Seagate Technology, LLC, 497 F.3d  1360 (Fed. Cir. 2006)], the Federal Circuit overturned the then existing standard for willful infringement.  Under the new standard, “to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent (Id. at 1371). If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.

Under the new standard, some practitioners argue that the granting of a reexamination request by the PTO therefore defeats a claim of willful infringement.  To date, district courts have declined to establish a per se rule regarding the impact of reexamination on a claim of willfulness.  Instead, the district courts have viewed the granting of a reexamination request as one factor, among a totality of the circumstances, to consider in examining whether a party can meet the requirements of In re Seagate [See Lucent Technologies v. Gateway, Inc., (S.D. Cal. 2007); St. Clair Intellectual Propery Consultants, Inc. v. Matsushita Electronic Industrial Co., Ltd. (D. Del 2009)].  At least one court found that “[i]t does appear that a reexamination order may be taken as dispositive with respect to post-filing conduct” (2007 U.S. Dist. LEXIS 95934 at *19).

Decisions on the impact of reexamination on the willfulness inquiry have focused on the status of the claims at the time of the willfulness determination.  For example, if a reexamination certificate issued without amendments to the claims or claims in suit, a court may be hesitant to assign much weight to the reexamination request in the willfulness inquiry.  However, before the reexamination certificate issues, the validity of a patent remains questionable and allegations of deliberate or reckless actions by a defendant may lack sufficient factual or legal grounds [See Ultratech Int’l, Inc. v. Swimways Corp., 3:05-cv-134-J-25MCR (M.D. Fla.)].


  • Standard for Willful Infringement
  • Grant of a Request for Reexamination
  • Certificate Issues Without Amendments