Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Tony Dutra
Jan. 27 — Authors of the Leahy-Smith America Invents Act of 2011 submitted a brief Jan. 20 assuring the U.S. Supreme Court that, in pushing that legislation, they were “fully aware of”—and chose not to amend—the standard for a judge to award punitive damages for patent infringement.
The high court is set to hear arguments Feb. 23 on when a trial court should “enhance” compensatory damages—up to a triple multiplier—based on the actions of the infringer. The controlling Seagate opinion of the U.S. Court of Appeals for the Federal Circuit—on “enhanced damages” under 35 U.S.C. §284—requires a finding of willful infringement, and willfulness cannot be found if the court sees an “objectively reasonable” argument for the defendant's infringement.
“Although it considered numerous proposed amendments over a six-year period, Congress ultimately did not alter the enhancement provision of Section 284, knowing that it was leaving Seagate in place,” the lawmakers' brief stated.
The brief acknowledged “considerable dissatisfaction” with the standard in debates in both the House and Senate. But, after an exhaustive review of several hearings on the topic leading up to the final votes on the legislation, it contended that Congress knew what it was doing when it didn't change the law.
The brief was signed by Sens. Patrick J. Leahy (D-Vt.), Orrin G. Hatch (R-Utah) and Michael F. Bennet (D-Colo.), and Reps. Lamar S. Smith (R-Texas), Robert W. Goodlatte (R-Va.) and Steven Chabot (R-Ohio). The AIA is named after Leahy and Smith, and the others were involved in the floor debate when it passed.
Daniel M. Lechleiter of Faegre Baker Daniels LLP, Indianapolis, filed the lawmakers' brief.
Pulse Electronics Inc. and Zimmer Inc. escaped the possibility of up to treble damages for infringing patents owned by Halo Electronics Inc. and Stryker Corp., respectively, by convincing the Federal Circuit they had a good reason to believe they were not infringing valid patents. Their briefs in the case were filed Jan. 13 (See previous story, 01/15/16).
The respondents will have to counter the views of the U.S. government as well, which on Jan. 25 was granted its request to participate in the oral argument.
Nine other briefs were filed in support of the respondents on Jan. 20, including a who's who of the high-tech industry: Google, Cisco, Verizon and Salesforce.com; Yahoo! and Arthrex; Intel, Hewlett-Packard and Medtronics; Dell, Samsung and the Internet Association, among others; EMC; Huawei; Marvell Semiconductor; BSA | The Software Alliance; and seven “Internet Companies”: Check Point Software, LinkedIn, Mozilla, Netflix, Pinterest, Roku and Twitter.
However, not all were 100 percent behind the standard set in In re Seagate Tech. LLC, 497 F.3d 1360, 2007 BL 83845, 83 U.S.P.Q.2d 1865 (Fed. Cir. 2007) (en banc) (162 DER A-11, 8/22/07).
While most of the briefs said that “objective reasonableness” must remain part of the willfulness test, others proposed that “deliberate copying” can be a basis for enhancing damages, regardless.
“The Federal Circuit has set the standard for establishing willfulness so low that it creates an imbalance in the law,” the Internet companies' brief said, calling, for example, on the Supreme Court to “revisit the definition of willfulness.”
Mark L. Hogge of Dentons US LLP, Washington, represents Pulse. Seth P. Waxman of Wilmer Cutler Pickering Hale & Dorr, Washington, represents Zimmer.
Craig Earl Countryman of Fish & Richardson P.C., San Diego, represents Halo. Jeffrey B. Wall of Sullivan & Cromwell LLP, Washington, is counsel of record for Stryker.
To contact the reporter on this story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Mike Wilczek in Washington at email@example.com
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)