WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently granted petitions, organized in reverse chronological order by date of certiorari petition.
Stryker Corp. v. Zimmer, Inc., No. 14-1520
The Patent Act provides that district courts “may increase . . . damages up to three times the amount found or assessed.” 35 U.S.C. § 284. Despite this permissive and discretionary language, the Federal Circuit requires, as a prerequisite to awarding enhanced damages under § 284, that a patentee prove by clear and convincing evidence that infringement was “willful,” meaning both that (1) there was an objectively high likelihood that the infringer’s actions constituted infringement, and (2) this likelihood was either known or so obvious that it should have been known to the accused infringer.
The questions presented are:
- Has the Federal Circuit improperly abrogated the plain meaning of 35 U.S.C. § 284 by forbidding any award of enhanced damages unless there is a finding of willfulness under a rigid, two-part test, when this Court recently rejected an analogous framework imposed on 35 U.S.C. § 285, the statute providing for attorneys’ fee awards in exceptional cases?
- Does a district court have discretion under 35 U.S.C. § 284 to award enhanced damages where an infringer intentionally copied a direct competitor’s patented invention, knew the invention was covered by multiple patents, and made no attempt to avoid infringing the patents on that invention?
Cert. petition filed 6/22/15, conference 9/28/15, conference 10/9/15, conference 10/16/15, cert granted and consolidated with No. 14-1513 (limited to Question 1 presented in No. 14-1513).
Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513
- Whether the Federal Circuit erred by applying a rigid, two-part test for enhancing patent infringement damages under 35 U.S.C. § 284, that is the same as the rigid, two part test this Court rejected last term in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for imposing attorney fees under the similarly worded 35 U.S.C. § 285.
- Whether the Federal Circuit erred by holding that a U.S. defendant does not “sell” or “offer to sell” the patented invention “within the United States” under 35 U.S.C. § 271(a), even though it enters a requirements contract with a U.S. customer that they negotiate and execute in the U.S., that is governed by California law, that specifies the material terms, and that creates legally binding obligations.
Cert. petition filed 6/22/15, conference 9/28/15, conference 10/9/15, conference 10/16/15, cert granted limited to Question 1 presented and consolidated with No. 14-1520.