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| 1 minute read

Federal Circuit Clarifies Meaning of "Willful" Patent Infringement Under Halo Decision

In an article published in June 2021 commemorating the 5-year anniversary of the Supreme Court's decision in Halo Elecs., Inc. v. Pulse Elecs., Inc. addressing willful patent infringement, I observed that the post-Halo views of the U.S. Court of Appeals for the Federal Circuit "on what 'willful' means lack consistency." In demonstrating the point, I compared the Federal Circuit's conflicting decisions in SRI v. Cisco (2019) and in Eko Brands (2020), commenting that Eko's standard "reflects Halo more faithfully than does SRI . . . ."

The Federal Circuit, after having heard a second appeal in that same SRI case, now agrees. 

In the block quote below from its new SRI decision, the Federal Circuit reiterates the Eko standard. The Federal Circuit reversed the district court's grant of judgment as matter of law directed to the willfulness issue. There, the district court had applied the 2019 SRI standard and found that the infringement was not willful.

Now, there is no doubt that a finding of "deliberate or intentional infringement" meets the Halo willfulness standard. The smoke indeed continues to clear on the subjects of willful patent infringement and enhanced damages.

To eliminate the confusion created by our reference to the language "wanton, malicious, and bad-faith" in Halo, we clarify that it was not our intent to create a heightened requirement for willful infringement. Indeed, that sentence from Halo refers to "conduct warranting enhanced damages," not conduct warranting a finding of willfulness. Halo, 136 S. Ct. at 1932 ("The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or— indeed—characteristic of a pirate.") As we said in Eko Brands, "[u]nder Halo, the concept of `willfulness' requires a jury to find no more than deliberate or intentional infringement." Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020) (citing Halo, 136 S. Ct. at 1933).


patent infringement, ip patent, insights, cicero_michael