Best Practices in Proving Specific
Intent and Malice. What Can Civil
and Criminal Litigators Learn from
One Another?
ABA Section of Litigation Annual Conference
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What is Specific Intent?
• Basic versus Specific Intent
• Model Penal Code Spectrum: Purposely,
Knowingly, Recklessly, Negligently
• Arizona Model Jury Instructions
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EXAMPLES OF CRIMES AND CIVIL OFFENSES
REQUIRING PROOF OF SPECIFIC INTENT
Crimes
Solicitation
Conspiracy
Attempt
Assault
Larceny and
Robbery
Burglary
Forgery
Tax Evasion
Intent to have the person solicited commit the
crime
Intent to have crime completed
Intent to complete crime
Intent to commit a battery
Intent to permanently deprive another of his/her
interest in property
Intent to a commit a felony in the dwelling
Intent to defraud
Intent to violate the tax laws
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EXAMPLES OF CRIMES AND CIVIL OFFENSES
REQUIRING PROOF OF SPECIFIC INTENT
Torts
Conversion
Intent to exercise dominion and control over
another’s property
Trespass to Land
Intentional interference with land of another
Inducing
Patent
or Intent to cause another to infringe
Copyright Infringement
Fraud on the Patent Intent to deceive the Patent and Trademark
Office/Inequitable
Office
Conduct
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Types of Intent Evidence
• Direct Evidence
• Circumstantial Evidence
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Circumstantial Character Evidence
• Evidence of crimes, wrongs, and other acts
• Generally, circumstantial use of character evidence is not
admissible to infer that conduct on a particular occasion was
in conformity with the past conduct.
• But Federal Rule of Evidence 404(b)(2) provides an
exception: “This evidence [crimes, wrongs, or other acts] may
be admissible for another purpose [other than to prove on a
particular occasion the person acted in accordance with the
character], such as proving motive, opportunity, intent,
preparation, plan, knowledge, identity, absence of mistake, or
lack of accident.” (emphasis added).
• This provision applies in both criminal and civil cases.
• But remember Rule 403 balancing
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Individual versus Corporate Defendants
• A company is not a person, so it can only act
vicariously through the people it employs as
its agents
• Respondeat superior - In general, a
corporation is liable for the actions of its
agents whenever such agents act within the
scope of their employment and at least in part
to benefit the corporation.
• Individual is liable for her/his own tortious
conduct even when acting for the benefit of
another.
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Issues Related to Intent in a
Federal Fraud Case
Jim Burke, Quarles & Brady LLP, Phoenix, Arizona
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CONFIDENTIAL © 2014 Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP,
which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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CONFIDENTIAL © 2014 Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP,
which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
10
CONFIDENTIAL © 2014 Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP,
which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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Belief That Investors Will Eventually Be Repaid Is Not
A Defense
Although an honest, good-faith belief in the truth of a misrepresentation may negate
intent to defraud, a good-faith belief that an investor will eventually be repaid and will
sustain no loss is no defense at all.
AUTHORITY:
United States v. Molinaro, 11 F.3d 853, 863 (9th Cir. 1992) (holding that the following
instruction “accurately stated the law”: “You may determine whether a defendant
had an honest, good faith belief in the truth of the specific misrepresentations alleged
in the indictment in determining whether or not the defendant acted with intent to
defraud. However, a defendant’s belief that the victim of the fraud will be paid in the
future or will sustain no economic loss is no defense to the crimes charged in the
indictment.”).
United States v. Benny, 786 F.2d 1410, 1414 (9th Cir. 1986) (“While an honest,
good-faith belief in the truth of the misrepresentations may negate intent to defraud, a
good-faith belief that the victim will be repaid and will sustain no loss is no defense at
all.”) (emphasis added)
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1. Two or more persons, in some way or manner, agreed to try to
accomplish a common and unlawful plan to commit a fraud crime
listed in Title 18 Chapter 63, as charged in the indictment
2. The Defendant knew the unlawful purpose of the plan and
willfully joined in it
Pattern Crim. Jury Instr. 11th Cir. C.1.54 (2010)
The statute does not require an overt act. The Supreme Court has
held that an overt act is not required for other similar statutes with
similar wording. See United States v. Shabani, 513 U.S. 10, 11 (1994)
(drug conspiracy); Whitfield v. United States, 543 U.S. 209, 214 (2005)
(money laundering).
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the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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Proving Intent in Probate
Arizona Revised Statute (A.R.S.) § 14-1102(B)(2)
provides that the underlying purposes and policies of the
Arizona Probate Code are to discover and make effective
the intent of a decedent in the distribution of his
property.
In the Arizona Trust Code, A.R.S. § 14-10415 provides
that the court may reform the terms of a trust, even if
unambiguous, to conform the terms to the settlor’s
intention if it is proved by clear and convincing evidence
that both the settlor’s intent and the terms of the trust
were affected by a mistake of fact or law, whether in
expression or inducement.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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How to Prove Intent in Probate Context
Intent can be proved by the language of the will/trust and
subsequent codicils/amendments.
• Intent can be proved by the testimony of witnesses:
• The settlor of a trust
• The attorney or financial planner who drafted the
document
• The beneficiaries under the will or trust
• The people who knew the decedent/settlor best and
to whom he may have expressed his/her intent,
such as spouse, children, siblings, parents, and
other family and friends.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
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How to Prove Intent in Probate Context
(Cont.)
Intent can be gleaned from reviewing prior estate
planning documents.
Intent can be proved by reference to nontestamentary documents, such as life insurance
policies, property deeds, joint tenancy, and payable
on death financial accounts.
Intent can be negated by the testator’s/settlor’s lack
of capacity at the time the estate planning document
was executed or if undue influence was exerted
upon the testator/settlor at the time the document
was executed.
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Presumptions
A.R.S. § 14-2712(B) provides that it is a rebuttable presumption that a
person who executes a governing instrument is presumed to have
capacity to execute the governing instrument and to have done so free
from undue influence and duress.
A.R.S. § 14-2712(E) and (F) provide that a governing instrument is
presumed to be the product of undue influence if either:
A person who had a confidential relationship to the creator of the
governing instrument was active in procuring its creation and execution
and is a principal beneficiary of the governing instrument
The preparer of the governing instrument or the preparer’s spouse or
parents or the issue of the preparer’s spouse or parents is a principal
beneficiary of the governing instrument.
The beneficiary of the governing instrument may overcome a
presumption of undue influence by a preponderance of the evidence.
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Fraud, Duress, or Undue Influence
A.R.S. § 14-10406 provides that a trust is void, in
whole or in part, to the extent its creation was
induced by fraud, duress, or undue influence.
To prove lack of capacity and susceptibility to undue
influence, medical records are useful as is the
testimony of a medical provider who was the
testator’s/settlor’s treating physician when the
documents were executed, or a neuropsychological
expert who can opine on these issues based upon a
review of the medical records. The testimony of
family and friends, who knew the testator/settlor well,
may also be helpful.
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which may not be disseminated or disclosed to any person or entity other than the intended recipient(s), and may not be reproduced, in any form, without the express written consent of
the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
23
Post-Therasense Standard
of Intent in Inequitable
Conduct
Heidi Keefe, Cooley LLP
ABA Litigation Panel
Scottsdale, AZ
© 2013 Cooley LLP, Five Palo Alto Square, 3000 El Camino Real, Palo Alto, CA 94306
The content of this packet is an introduction to Cooley LLP’s capabilities and is not intended, by itself, to
provide legal advice or create an attorney-client relationship. Prior results do not guarantee future outcome.
DUTY OF CANDOR IN PATENT PROSECUTION
37 C.F.R. Section 1.56 (“Rule 56”)

•

(a) . . . Each individual associated with the filing and
prosecution of a patent application has a duty of candor and
good faith in dealing with the Office, which includes a duty to
disclose to the Office all information known to that individual to
be material to patentability as defined in this section. The duty
to disclose information exists with respect to each pending
claim until the claim is cancelled or withdrawn from
consideration, or the application becomes abandoned. . . .
Accused patent infringers scour records to look for any failures to
comply with Rule 56. When those failures rise to intentional and
material misconduct, a court has the equitable power to hold the
patent (and its patent family) unenforceable due to inequitable
conduct in the prosecution of the application.
www.cooley.com
Therasense, Inc. v. Becton, Dickinson & Co.,
649 F.3d 1276 (Fed. Cir. 2011) (en banc)

Therasense redefined the standard for Inequitable Conduct:



Inequitable conduct now requires a party to separately prove specific
intent and but-for materiality.
Materiality: New “but‐for" test: PTO would not have allowed a claim
had it been aware of the undisclosed prior art.
Intent to deceive:

Intent requires knowledge and deliberate action.

Intent and materiality are separate requirements. No sliding scale. Intent
may not be inferred solely from materiality.

Specific intent to deceive must be "the single most reasonable inference
able to be drawn from the evidence.” – Thus, when multiple reasonable
inferences may be drawn, intent to deceive cannot be found.

Gross negligence or negligence under a “should have known” standard
does not satisfy the intent requirement.
www.cooley.com
Post-Therasense Federal Circuit Reversal of
Inequitable Conduct

1st Media, LLC v. Electronic Arts, Inc. (Fed. Cir. 2012)

Pre‐Therasense, D. Ct. found inequitable conduct:


Inventor and patent attorney:

withheld material references.

knew references were material.

failed to provide a credible good faith explanation for nondisclosure of the
references.

Therefore, D.Ct. found inference of intent to deceive was appropriate.
Fed. Cir. reversed: lack of evidence of deliberate decision to withhold.

D.Ct. did not address whether there was a deliberate decision to
withhold.

Knowledge of reference and its materiality alone are insufficient after
Therasense to show an intent to deceive.

“[I]t is not enough to argue carelessness, lack of attention, poor
docketing or cross‐referencing, or anything else that might be
considered negligent or even grossly negligent.”
www.cooley.com
Post-Therasense Federal Circuit Vacate
Finding of Intent for Inequitable Conduct



Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318 (Fed. Cir.
2011)

Inventors withheld knowledge and information regarding prior art Honda
system installed in the Acura 96RL.

Pre-Therasense, the D. Ct. found inequitable conduct .
District Court’s circumstantial evidence of deceptive intent:

Inventors had operated the 96RL navigation system and developed car
manuals in prior business.

Patent specifications included description and figure from 96RL manual.

Applied sliding scale for intent.
Federal Circuit vacated finding of intent:

District Court used sliding scale.

No holding that any of the inventors knew withheld information was in
fact material and made a deliberate decision to withhold it.
www.cooley.com
Post-Therasense Finding of Intent:
Intellect Wireless v. HTC (Fed. Cir. 2013)

A rare instance of post-Therasense finding of inequitable conduct.

Facts:



During the prosecution of the patent family, the inventor submitted a false
declaration asserting that he had reduced to practice the claimed invention prior
to the date of a prior art reference.

During prosecution of the patent family, Mr. Henderson submitted a misleading
press release to the PTO stating that the Smithsonian acquired “prototypes” of
the invention when the “prototype” was an imitation smartphone made of wood
and plastic that was not capable of performing the claimed functions.
Intent: The Fed. Cir. affirmed finding of specific intent to deceive. In
addition to the false statements made during prosecution, the
inventor also made false statements about actual reduction to
practice during the prosecution of other patents in the family.
The court emphasized a “pattern” of false and misleading
statements combined with the submission of a false
declaration containing fabricated examples of actual reduction to
practice was sufficient to establish intent to deceive.
www.cooley.com
Proving Intent of Inequitable Conduct

Proving the requisite intent for inequitable conduct is much harder in
a post-Therasense world.

It appears easier to prove an intent to deceive when an individual
declares an incorrect statement to be true (i.e., false
affidavit/declaration) to the PTO.

Inequitable conduct as it relates to the non‐submission of prior
art is difficult to prove and may only be available in the most
egregious of scenarios.
www.cooley.com
Decline in Inequitable Conduct Pleadings Post
Therasense

As a result, inequitable conduct pleadings have declined:
Crouch, Dennis and Jason Rantanen. “Patent Law Analysis by Professors Dennis Crouch and Jason Rantanen.”
20 September 2013. http://www.patentlyo.com/patent/2013/09/trends-in-inequitable-conduct.html
www.cooley.com
April 11, 2014
Presented by Lisa Kobialka
Areas Involving Intent
Willful Infringement
 A finding of willful infringement is a prerequisite to the
award of enhanced damages.
 Standard changed in 2007
 Today it is a two prong test
Inducement
 Specific intent necessary – accused inducer must have knowledge
that the induced acts constitute patent infringement
Willful Infringement – Before Seagate
Due Care Standard
Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983)
 If a potential infringer had actual notice of
another’s patent rights, they had the “affirmative
duty to exercise due care” to determine whether or
not they were infringing
 Measured by totality of circumstances
Totality of circumstances test was meant to indicate the
state of mind of the accused
Willful Infringement – Seagate Standard
Two Prong Inquiry
In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)
The duty of care in Underwater Devices
set a lower threshold for willful
infringement more akin to negligence
Abandon the duty of care and established
a two prong inquiry
Willful Infringement – Seagate Standard
 Objective prong
 Patentee must show infringer acted despite a high likelihood
that actions infringed a valid patent
 State of mind is not relevant
 Subjective prong
 Either knew or so obvious that it should have been known
 “We leave it to future cases to further develop the
application of this standard.” In re Seagate, 497 F.3d at
1371 (August 20, 2007).
Evidence of Willful Infringement
at Trial
Software and hardware patent case
Specific references to the patent holder’s
company in defendant’s source code
 Example: “[Company] Buster” or “[Company Killer”]
Testing patent holder’s product which
embodied the claimed invention
Showing the asserted patents were used as a
roadmap to develop accused products
Subsequent Decisions Articulate Standard
Judge decides objective prong
 Issue is whether conduct was objectively reckless, such
as reliance on particular defense, opinion of counsel
Subjective prong
 Acted within standards of commerce for industry
 Intentionally copied product covered by patent
 Reasonable basis for non infringement or defense to
infringement
 Good faith effort to avoid infringement
 An attempt to cover-up infringement
 Opinion of counsel
Not Sufficient Evidence For Objective Prong
Inflammatory comments in documents or
testimony
 “FU SON”
 Name calling in deposition
Dislike of competitor was not enough to
suggest objectively reckless
Inducing Infringement
Must have knowledge that the induced acts
constitute patent infringement
 Knowledge that actions induce others to infringe
 Knowledge of patent
Can be shown with willful blindness
Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011)
 Subjective belief that there is a high probability that patent exists
and the defendant’s acts infringe patent
 Took deliberate actions to avoid learning about those facts
Standard is stricter than deliberate indifference
In the Pharmaceutical Context
File New Drug Application (NDA) with FDA
Undergo a rigorous FDA approval process
FDA approves the drug which sets forth the
parameters for how the drug is to marketed,
prescribed and used
Inducing Infringement Example
Patent claims “a method to treat a patient
for asthma with a particular compound…”
 Doctor or nurse completes the method
 If there is knowledge of the asserted patent, one
can use the FDA’s requirements to prove intent
to induce doctor or nurse
QUESTIONS?