Brief Amicus Curiae of Intellectual Property Professors in Support of Neither Party, No. 14-1513, Halo Elecs. Inc. v. Pulse Elecs. Inc.; No. 14-1520, Stryker Corp. v. Zimmer, Inc. (U.S. Supreme Court)

Abstract

This amicus brief was filed on behalf of several intellectual property law professors in Halo v. Pulse and Stryker v. Zimmer regarding the appropriate standard for enhancing (increasing) damages under section 284 of the Patent Act, 35 U.S.C. § 284. It advances three primary arguments. First, it asserts that in light of the history of the statutory text and judicial precedent, willful infringement is the appropriate standard (and thus the only valid basis) for awarding enhanced damages under § 284 . Second, it contends that Federal Circuit’s two-part, objective/subjective test for determining willfulness articulated in In re Seagate Technology, LLC, 497 F.3d 1370 (Fed. Cir. 2007), is incorrect as a matter of law because this test is overly rigid and inflexible, particularly in light of the Supreme Court’s recent decision in Octane Fitness v. ICON Health & Fitness, Inc. 134 S. Ct. 1749 (2014), that rejected a similar test for attorney fee awards under § 284. Third, it argues that the Court should conclude the correct test for determining willfulness — and thus eligibility for enhanced damages — is that the infringer has at least recklessly violated the patentee’s rights under a totality of the circumstances.

Keywords: patent, remedies, enhanced damages, punitive damages, Seagate, Bard, octane fitness, willful infringement, willfulness

JEL Classification: K19, O31, O34