22 December 2015Copyright

US government calls for less restrictive wilful infringement standard

The US government has urged the US Supreme Court to vacate decisions in the Halo v Pulse and Stryker v Zimmer cases arguing that the test applied by courts to determine wilful infringement is too restrictive.

In an amicus brief filed by the US Solicitor General, Donald Verrilli, and joined by counsel for the US Patent and Trademark Office, the amici has urged the Supreme Court to vacate the decisions.

The issue centres on the federal circuit’s application of the Seagate Technology precedent, which requires a plaintiff to demonstrate clear and convincing evidence that the infringement was objectively reckless and that the likelihood of infringement was clear to the defendant in order for a claimant to collect enhanced damages.

However, the brief states that if an infringer presents an “objectively reasonable” defence that the patent was not infringed or invalid then its actions is not viewed as wilfully infringing a patent.

Verrilli and the USPTO argued that the federal circuit’s decisions have “imposed unwarranted restrictions” on a party’s attempts to obtain enhanced damages and ultimately “contrary to the text of section 284” of the US patent code.

While sympathising with the federal circuit’s “justifiable concern” that pre-Seagate, courts had “authorized enhanced damages under an overly-generous standard more akin to negligence”, the brief complained that “the specific limitations that the court has imposed ... is to make enhanced damages unavailable for a significant class of infringing conduct that is properly viewed as especially egregious”.

The case has divided many. On Friday, December 18, WIPR reported that Public Knowledge and the Electronic Frontier Foundation filed a brief stating that a less restrictive standard for parties to prove wilful infringement would have a detrimental impact on small-to-medium enterprises.

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