Hiding in plain sight: avoiding damages for wilful patent infringement

Under the US patent system, the only thing worse than being found to be an infringer is being found to be a wilful infringer. A wilful infringer not only pays compensatory damages, but may also, under certain circumstances, face enhanced damages, which can be as much as three times the compensatory damages (35 USC § 284). The best way to avoid this fate is to avoid a finding of infringement; in general, businesses choose to defend against a patent infringement claim only if they believe that they have a strong non-infringement, invalidity or unenforceability defence (or if the demanded damages are deemed grossly excessive). At times those careful calculations fail, however, and the court enters a judgment of infringement. This chapter considers some steps that a patent infringement target can take before trial to minimise the possibility of a finding of wilfulness.

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