We previously reported on Tomita's $30.2 million verdict against Nintendo in the Southern District of New York. After trial, the Court ruled in open court that Tomita had failed, as a matter of law, to prove willful infringement by clear and convincing evidence. Judge Rakoff issued his Memorandum Order on willful infringement on March 15, 2013.
The Court found that objective willfulness did not exist. At trial, the Court found that Nintendo's evidence of how the 3DS operates and evidence relating to invalidity of the patent-in-suit provided a reasonable basis for the assertion of non-infringement and invalidity defenses. Tomita failed to prove by clear and convincing evidence that Nintendo's defenses were objectively unreasonable.
Willful infringement requires both an objective and subjective showing. (In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).) To demonstrate objective willfulness, the "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.) The objective determination of recklessness lies with the judge as a question of law. (Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012).)
This case is one of many examples demonstrating that the clear and convincing standard for willful infringement is difficult to meet where there is a bona fide dispute between the parties about infringement and validity.
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