United States: Supreme Court Sets New Standard For Enhanced Damages In Patent Litigation

The U.S. Supreme Court has set a new standard for determining when courts may award enhanced damages in patent disputes.

On June 13, 2016, the Court issued its unanimous opinion in Halo Electronics, Inc., v. Pulse Electronics, Inc. 597 U.S. __ (2016), ruling that the decision to award or deny enhanced damages under 35 U.S.C. section 284 lies within the district court's discretion. This ruling overturned the precedent set by the Federal Circuit in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007).

Section 284 provides for enhanced damages in patent cases, stating, in relevant part, that "the court may increase the damages up to three times the amount found or assessed." 35 U.S.C. § 284 (2016). Under Seagate, a patentee seeking enhanced damages under section 284 was required to satisfy a two-part test designed to show that the infringer's actions were "willful." First, the patentee had to establish by clear and convincing evidence that the infringer "acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." Id. at 1371. But such "objective recklessness" could not be established when, during the infringement proceedings, an accused infringer "raise[s] a 'substantial question' as to the validity or noninfringement of the patent." Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., 776 F.3d 837, 844 (Fed. Cir. 2015). If a patentee was able to satisfy this first "objective" step, they then had to show, by clear and convincing evidence, that the risk of infringement "was either known or so obvious that it should have been known by the accused infringer." Seagate, 497 F.3d at 1371. A district court was free to exercise its discretion to enhance damages only after both steps of the Seagate inquiry were satisfied. Id.

The Supreme Court held in Halo that the Seagate test was inconsistent with the language of section 284, which explicitly states that a court "may" increase the damages in a patent case (up to three times the amount assessed) without placing any additional limitations on a district court's discretion. Halo, 597 U.S. at *7-8. The Halo opinion explicitly references the threshold "objective" step of the Seagate inquiry as placing an undue restraint on judicial discretion, pointing out that, although "culpability is generally measured against the knowledge of the actor at the time of the challenged conduct," an infringer (even if that infringer was a "wanton and malicious pirate") could avoid enhanced damage liability by simply relying on his attorney's ability to craft a plausible defense at trial. Id at *9-10.

In place of the Seagate test for willfulness, the Supreme Court in Halo charges district courts to "take into account the particular circumstances of each case in deciding whether to award damages, and in what amount." Id. at *11. And while the Halo opinion places the exercise of the enhanced damages provision of section 284 squarely within the district court's discretion, the Court repeatedly emphasized that "discretion is not a whim," and that the exercise of a court's discretion under section 284 has been narrowed by two centuries of case law to the point where it is "generally reserved for egregious cases of culpable behavior." Id at *8-9.

In addition to overturning the Seagate court's two-part test for willfulness, the Supreme Court in Halo overturned the burden of proof set by Seagate, as well as the standard of review for enhanced damages appeals. Reasoning that no especial burden of proof was explicitly stated in section 284, the Halo Court ruled that the preponderance of the evidence standard, which applies generally to patent infringement cases, also applies to enhanced damages. Id at *12. Further, as the inquiry under section 284 now rests in the discretion of the district court, the Supreme Court ruled that appeals should be examined under the "abuse of discretion" standard, and not under the tripartite review standard that applied under Seagate. Id at *12-13.

Finally, in a concurring opinion joined by Justices Alito and Kennedy, Justice Breyer wrote separately to emphasize several additional points. First, Justice Breyer reemphasized that the Halo opinion does not stand for the proposition that mere knowledge of the asserted patent amounts to the type of "willful misconduct" that should form the basis of an award of enhanced damages. Halo, 579 U.S. at *1 (J. Breyer, concurring). Second, Justice Breyer pointed out that the Halo opinion does not create an affirmative duty to obtain advice of counsel, and that section 298 (prohibiting the use of an accused infringer's failure to obtain the advice of counsel as proof of willful infringement) still applies. Id. at *2-3. Finally, Justice Breyer reemphasizes the point raised in the majority opinion that enhanced damages under section 284 are meant to be punitive, and not compensatory, and that section 284 should not apply to costs or expenses. Id at *3.

The Court's opinion in Halo comes only two years after a similar rejection of limitations on judicial discretion in the context of awarding attorney's fees. See Octane Fitness, LLC v. ICON Health and Fitness, Inc. 572 U.S.___, 134 S. Ct. 1749 (rejecting a two-part test to determine whether a case is "exceptional" for the purposes of awarding attorney's fees under 35 U.S.C. section 285)1. As was the case in Octane Fitness, it will now be up to the individual district courts to exercise their discretion and determine the exact impact of the Halo ruling on damages awards, and on the patent litigation landscape in general.


1 Indeed, the reasoning of the Octane Fitness opinion is referenced throughout the Halo opinion.

This article is presented for informational purposes only and is not intended to constitute legal advice.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Shearman & Sterling LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Shearman & Sterling LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions