Piercing Halo’s Haze at Year Five: Smoke Clearing on Enhanced Damages

In an article published on June 13, 2021, by IPWatchdog, Michael Cicero discusses the five year anniversary of the Supreme Court's decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., addressing standards for recovery of enhanced damages for patent infringement pursuant to Section 284 of the Patent Act, under which a “court may increase the damages up to three times the amount found or assessed.” In Halo, the Supreme Court rejected damages-related requirements imposed by In re Seagate Tech., LLC, a 2007 decision from the U.S. Court of Appeals for the Federal Circuit.

"With patentee litigants freed from what the Supreme Court called Seagate’s “inelastic constraints” in favor of a totality-of-circumstances approach, a consensus developed that Halo would facilitate recovery of enhanced damages," explained Cicero. 

Statistics suggest alignment with that view. For completed post-Halo years, 15 judgments for enhanced patent damages issued in each of 2017 and 2018, 13 in 2019, and 14 in 2020. Those totals markedly exceed the 7, 6, and 8 enhancement judgments reported for 2014, 2015, and 2016, respectively.

"Yet Halo generated new questions," said Cicero, including, "How does one now plead a willful infringement claim? Did Halo resurrect opinions of counsel as a hedge against willfulness claims? If so, how does that resurrection square with 35 U.S.C. § 298, which bars patentees from arguing that the absence of such opinions indicates willfulness?"

Recent post-Halo cases address such questions, though courts remain divided on another question – whether post-suit knowledge can predicate a willfulness claim.