Enhanced Damages Denied in Halo Remand

​Following remand, the court again denied plaintiff's motion for enhanced damages because defendant was not a "pirate." "Enhanced damages remain an exceptional tool meant to punish patent 'pirates' -- companies that intentionally infringe with no regard for a plaintiff’s rights. The record reveals that [defendant] is no pirate. Its defense strategies were questionable, which is reflected in the jury’s verdict against it. But [defendant] offers ample evidence that: (1) when it learned of [plaintiff's] patent [defendant] investigated whether its products infringed, (2) [defendant] pursued non-frivolous defenses at trial, and (3) [defendant] had a basis to subjectively believe it was not infringing [plaintiff's] patent throughout this litigation and prior."

Halo Electronics, Inc. v. Bel Fuse Inc., et al, 2-07-cv-00331 (NVD September 6, 2017, Order) (Gordon, USDJ)

Willful Infringement Claim Based Solely on Post-Filing Conduct Fails as a Matter of Law​

The court granted defendants' motion to dismiss plaintiff's willful infringement claim because it was based on post-filing conduct. "Although [Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016)] rejected the [In re Seagate Tech, LLC, 497 F.3d 1360 (Fed. Cir. 2007)] test of what constitutes a reckless state of mind to support an award of § 284 damages as too rigid, it did not discuss whether such damages are limited to the alleged infringer's pre-filing conduct, other than to state that culpability for willful infringement purposes is 'measured against the knowledge of the actor at the time of the challenged conduct.' The Federal Circuit in Seagate stated that 'in ordinary circumstances, willfulness will depend on an infringer's prelitigation conduct.' Other cases, post-Halo, have concluded that Seagate's conclusion with respect to the unavailability of a claim for willful infringement based upon post-filing conduct is still good law. Further, a court in this district has held that a claim for enhanced damages based on willful infringement 'must necessarily be grounded exclusively in the accused infringer's pre-filing conduct. . . when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction.' . . . Accordingly, the Court finds that Plaintiffs willful infringement claim, which is based solely on Defendants' post-filing conduct, fails as a matter of law."

Cooper Lighting, LLC v. Cordelia Lighting, Inc. et al, 1-16-cv-02669 (GAND April 6, 2017, Order) (Cohen, USDJ)

Invalidity Opinion Delivered After Product Launch No Defense to Willful Infringement​

Following a jury trial, the court granted plaintiff's motion for entry of judgment and found that defendant's patent infringement was willful because defendant's invalidity defenses were not relied upon at the time the accused products were introduced. "[T]he Court in [Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016)] has eliminated the ability of an accused infringer to posit reasonable invalidity defenses which were not relied upon at the time the accused products were introduced into the market. . . . '[C]ulpability is generally measured against the knowledge of the actor at the time of the challenged conduct.' There is no indication in the record that [defendant's expert] provided [defendant] his opinion on invalidity before the accused products went into production. . . . [T]here is no record evidence that [defendant] had knowledge of the invalidity defense derived from the combination of prior art and SAE standards at the time of the challenged conduct."

Omega Patents, LLC v. Calamp Corp., 6-13-cv-01950 (FLMD April 5, 2017, Order) (Byron, USDJ)

Halo Does Not Disturb Jury Finding of Willfulness​

Following a jury trial, the court denied defendants' motion for judgment as a matter of law that they did not willfully infringe plaintiff's patents in light of the Supreme Court's intervening decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016). "[T]he jury found that [plaintiff] had proven by clear and convincing evidence that Defendants willfully infringed the asserted claims. . . . [A]fter the jury returned a verdict, but before final judgment, the Supreme Court determined that the Federal Circuit’s two-part test for enhanced damages was inconsistent with 35 U.S.C. § 284, repealing [In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007)]. . . . By returning a verdict of willful infringement, the jury found that Defendants acted 'recklessly' . . . and that they 'actually knew or should have known that [their] actions constituted an unjustifiably high risk of infringement of a valid patent.'. . . Because the jury’s finding was made under the higher clear and convincing standard, the Court upholds the verdict and moves to the next stage of the enhancement inquiry."

NobelBiz, Inc. v. Global Connect, LLC, 6-12-cv-00244 (TXED October 27, 2016, Order) (Schroeder, USDJ)

Willful Infringement Following Six-Year Period of Intervening Rights Does Not Justify Enhanced Damages

Following a jury verdict of willful infringement, the court denied plaintiff's motion for enhanced damages because of defendant's absolute intervening rights defense. "At the summary judgment stage, the Court granted [defendant's] motion for summary judgment in its favor on its defense of absolute intervening rights. . . . Thus, the period of infringement in the present case began [8 months ago]. This fact is important to the Court’s analysis because, in [Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 14-1513 (June 13, 2016)], the Supreme Court explained that an infringer’s culpability should be measured at the time of the challenged conduct. . . . Under the Court’s intervening rights ruling, [defendant] is not liable for any sales of [the accused] capacitors that occurred prior to [8 months ago]. Therefore . . . [defendant] had already been permissibly selling the accused products without being subject to damages liability for almost six years. Moreover, at the time infringement began, [the parties] were well into the present litigation. . . . [T]he Court declines to find that the willful infringement that occurred in the case after [intervening rights applied] constitutes an 'egregious' case of misconduct warranting an award of enhanced damages. Rather, the present action was a 'garden-variety' hard-fought patent infringement action between two competitors."

Presidio Components, Inc. v. American Technical Ceramics Corp., 3-14-cv-02061 (CASD August 17, 2016, Order) (Huff, USDJ)

Jury Finding of Willfulness Does Not Require Award of Enhanced Damages Under Halo

The court denied plaintiff's motion for enhanced damages under 35 U.S.C. § 284 and rejected plaintiff's argument that the jury finding of willful infringement was binding on the court. "[Plaintiff] argues that the jury’s willfulness finding is binding on the Court, that enhanced damages are required, and that the Court’s discretion lies only in deciding what amount of enhanced damages to award. . . . While the [Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992)] factors remain helpful to this Court’s analysis, the touchstone for awarding enhanced damages after [Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016)] is egregiousness. . . . 'The subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages . . . .' Assuming without deciding that the jury’s verdict, based on the subjective prong of the now-overruled [In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)] test, is sufficient to find subjective willfulness, the Court still finds, in its discretion, that the defendants’ conduct did not rise to the level of egregiousness meriting an award of enhanced damages. . . . [D]efendants did not deliberately copy the [patent-in-suit], did not try to conceal the chips found to be infringing, did reasonably investigate the scope of the patent, and did form a good faith belief that their products did not infringe based on their view of the proper claim construction and crystallinity of their buffer layer."

Trustees of Boston University v. Everlight Electronics Co., Ltd., et al, 1-12-cv-11935 (MAD July 22, 2016, Order) (Saris, J.)

Under Halo, Enhanced Damages Claim Does Not Require Request for Preliminary Injunction

The magistrate judge recommended denying defendant's motion to dismiss plaintiff's willful infringement claim for failure to state a claim and found that the Supreme Court's recent decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), did not require plaintiff to first seek a preliminary injunction. "While true that the '[In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007),] test' is distinct from Seagate's preliminary injunction requirement, the court finds in Halo a wholesale supplanting of the Federal Circuit's 'inelastic constraints' in favor of an approach that affords district courts the discretion to mete out damages as they see fit; with or without a plaintiff moving for a preliminary injunction. Indeed, if in the midst of its derogation of Seagate, the Court had intended for a significant aspect of that case to remain intact, it likely would have said so. Halo thus broadly rejects any formal restriction on a district court's discretion to award enhanced damages."

SimpliVity Corporation v. Springpath Inc., 4-15-cv-13345 (MAD July 15, 2016, Order) (Hennessy, M.J.)

After Halo, Jury Finding Alone Sufficient to Support Judgment of Willfulness

The court granted plaintiff's motion for judgment as a matter of law that defendants willfully infringed its transformer patent based on the jury's finding of willful infringement. "[T]he jury returned a verdict in favor of the Plaintiff, finding that [defendants] both acted willfully . . . . The Court deferred entering a judgment on the jury’s verdict, however, in order to consider the objective prong of the [In re Seagate Tech., LLC, 497 F.3d 1370 (Fed. Cir. 2007)] willfulness analysis. . . . [I]n [Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016)], the Supreme Court has overruled the objective prong of Seagate, leaving the issue of willfulness as solely a factual issue which can readily be addressed by a jury. Here, the jury was instructed to make a factual determination as to whether [defendants] acted willfully, and the jury answered this question in the affirmative. In light of Halo, this finding standing alone is sufficient to support a finding of willfulness. Because this Court is no longer required to make a finding to satisfy the 'objective recklessness' prong of Seagate, a judgment will therefore be entered based on the jury’s verdict that [defendants] willfully infringed the [patent-in-suit]."

Sociedad Espanola De Electromedicina Y Calidad, S.A. et al v. Blue Ridge X-Ray Company, Inc. et al, 1-10-cv-00159 (NCWD July 8, 2016, Order) (Reidinger, J.)