An Empirical Study of Willful Infringement and Enhanced Damages-Analyzing the Impact of U.S. Supreme Court’s Halo Decision

• Main Authors: Wu, Chien-Hao, 吳健豪
• Other Authors: Liu, Shang-Jyh
• Format: Others
• Language: zh-TW
• Published: 2018
• Online Access: http://ndltd.ncl.edu.tw/handle/tn2qem

碩士 === 國立交通大學 === 科技法律研究所碩士在職專班 === 106 === The Supreme Court of the United States issued a combined judgment on Halo Electronics v. Pulse Electronics and Stryker v. Zimme on June 13, 2016, broadening the criteria for willful infringement and rejecting the two-part test established by Court of Appeals for the Federal Circuit (CAFC) in In re Seagate Technology case. The U.S. Supreme Court opined that Seagate’s decision on willful infringement was unduly rigid and impeded the district court’s discretion of awarding enhanced damages entitled by 35 U.S.C. § 284. Under Seagate's standard, by requiring an “objective recklessness” finding in every case, it excludes from discretionary punishment for the most culpable offenders, including the wanton and malicious pirate who intentionally infringes a patent with no doubts about its validity or any notion of a defense for no purpose other than to steal the patentee’s business. In order to avoid said scenario, Supreme Court overturned Seagate's decision regarding willful infringement, addressed that enhanced damages are reserved for egregious case and the district court has the discretion to decide whether to award enhanced damages. This thesis aims to evaluate the impact of new willful infringement standard and conclude the actions of patentee and alleged infringer should take, prior to or during litigation, to protect the legal right and minimize the risk.