Hat tip to my colleague Prentiss Cox for bringing to my attention this July 1 opinion from Judge Ann Montgomery determining, on remand, that Octane Fitness is entitled to recover attorneys' fees under 35 U.S.C. section 285. The amount of the award is yet to be determined. For my blog post on the Supreme Court decision from last year, see here.
In other news, both Halo and Stryker have filed cert. petitions (Numbers 14-1513 and 14-1520, respectively) asking the Supreme Court to eliminate willfulness as a precondition for an award of enhanced damages, and also to eliminate the Seagate requirement of a showing of objective and subjective recklessness, which is simialr to the standard for exceptional case that the Court discarded last year. (Hat tip to BNA Bloomberg's Patent, Trademark, and Copyright Journal.) Here is Halo's question presented (there is a second question relating to the definition of "sale" or "offer to sell" under section 271(a), which I will skip):
1. 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.
And here are Stryker's:
1. 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?
2. 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?
While there is certainly an arguable case for both petitioners' positions, in my opinion the policy arguments for awarding attorneys' fees are much stronger than the arguments for awarding enhanced damages (as suggested by the fact that in many countries attorneys' fees are routinely awarded, while enhanced or punitive damages almost never are). A return to something like the pre-Seagate standard for enhanced damages would in my view be a colossal mistake. But we'll see what happens. So far the Supreme Court has no IP cases yet on its docket for 2015-16. For previous blog posts on Halo and Stryker, see here and here.
This is a busy day. The Federal Circuit also decided an interesting damages case today, Westerngeco L.L.C. v. ION Geophysical Corp. I'll be back either tomorrow or Monday with a write-up.