In deciding the present appeal, this court determined that the United States District Court for the District of Arizona (“trial court”) was correct in its judgment and affirmed all of the conclusions reached by the trial court. See Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d 1171 (Fed. Cir. 2012). The appellant, W.L. Gore & Associates, Inc. (“Gore”), timely filed a petition for rehearing and rehearing en banc. Therein, Gore again faulted the trial court’s willfulness analysis. Separately, an Amici Curiae brief in support of that petition argued that the objective prong of willfulness should be considered a question of law subject to de novo review on appeal. This court granted the petition for rehearing en banc and returned the matter to the panel for reconsideration, see En Banc Order, Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., No. 2010-1510 (Fed. Cir. June 14, 2012), for the sole purpose of revisiting the issue of will-fulness and further explicating the standard of review applicable to it.
The court today reaffirms its opinion issued on February 10, 2012, except for section E and that portion of section F relating to Section 284 and 285 of Title 35 of the United States Code allowing for enhanced damages and attorneys’ fees.1 The court vacates section E and the limited portion of section F relating to its prior discussion of willfulness. The briefs related to the petition for re-hearing present this court with a new question regarding the nature of the objective inquiry from In re Seagate Technology, LLC (“Seagate”), 497 F.3d 1360 (Fed. Cir. 2007) (en banc). The court agrees that the trial court failed to address the objective prong of willfulness as a separate legal test from Seagate’s subjective component. The court now holds that the threshold objective prong of the willfulness standard enunciated in Seagate is a ques-tion of law based on underlying mixed questions of law and fact and is subject to de novo review. The court remands the issue of willfulness so that the trial court may reconsider its denial of JMOL of no willful infringement in view of this holding. If the court grants the JMOL, it should then reconsider its decisions on enhanced damages and attorneys’ fees.
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