Taking its first IP cases of the current session, the Supreme Court has granted certiorari in two § 284 enhanced fee award patent cases: Halo Electronics, Inc. v. Pulse Electronics, Inc., S.Ct. No. 14-1513 (Oct. 19, 2015) and Stryker Corp. v. Zimmer, Inc., No. 14-1520 (Oct. 19, 2015).

The two cases, focusing on whether the Federal Circuit’s “rigid” test, limiting enhanced patent damages is appropriate, will be heard together. The Supreme Court’s grant of cert in this case comes in the wake of the Court’s 2014 decision in Octane Fitness where the Court rejected a “rigid test” in the context of § 285 fee-shifting (IP Update, Vol. 17, No. 5).

The relevant statute, 35 U.S.C. 284, states that “the court may increase the damages up to three times the amount found or assessed.”

Questions presented:

Halo: 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. for imposing attorneys’ fees under the similarly-worded 35 U.S.C. § 285.

Stryker: Whether 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.