Digest of Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 2013-1472, 2013-1656 (Fed. Cir. Mar. 23, 2015) (precedential). Request for Rehearing and Rehearing En Banc. Before Prost, Newman, Lourie, Dyke, Moore, O’Malley, Reyna Wallach, Taranto, Chen, Hughes, and Moore (per curiam).

Procedural Posture: Plaintiff-Appellant Halo petitioned for rehearing and rehearing en banc following panel affirmance of the district court’s summary judgment of non-infringement and the district court’s judgment that the infringement of certain patents was not willful. CAFC denied the petition.

Taranto, joined by Reyna, concurring:

  • Damages/Willfulness: Plaintiff argued that the objective reasonableness of Defendant Pulse’s invalidity position must be judged based on Pulse’s belief prior to infringement. Judges Taranto and Reyna found that this question lacked sufficient general importance to warrant rehearing or en banc review. In contrast, they noted that there are several open questions regarding enhanced damages under 35 U.S.C. § 284 of significant importance, including whether: (i) willfulness should remain necessary; (ii) the willfulness test set forth In re Seagate, 497 F.3d 360 (Fed. Cir. 2007), remains controlling precedent; and (iii) a willfulness judgment is reviewed de novo on appeal.

O’Malley, joined by Hughes, dissenting:

  • Damages/Willfulness: The court’s jurisprudence governing the award of enhanced damages under 35 U.S.C. § 284 closely mirrors its jurisprudence governing the award of attorney fees under 35 U.S.C. § 285. Consequently, previous precedent has failed to properly account for subjective bad faith when considering the baselessness of a claim or defense. In view of the Supreme Court’s recent decision regarding attorneys’ fees in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), the court should decide whether subjective bad faith may be considered when considering the baselessness of a claim or defense under § 284.