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Past the Tipping Point: Reforming the Role of Willfulness in the Federal Circuit's Doctrine of Enhanced Damages for Patent Infringement |
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Written by Scott Bloebaum
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Tuesday, 08 January 2008 |
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Scott Bloebaum
The Federal Circuit's recent decision in In re Seagate Technology, L.L.C. modified the standard for determining whether a patent has been infringed willfully, but left intact the existing doctrine that requires willfulness to justify enhanced damages under 35 U.S.C. § 284. This Comment presents several arguments as to why the current enhanced damages doctrine should be modified. The U.S. Supreme Court's recent decision in eBay Inc. v. MercExchange, L.L.C. on the availability of injunctive relief under 35 U.S.C. § 283 provides strong support to these arguments. Finally, the author proposes a flexible enhanced damages doctrine and compares it with a legislative solution currently being considered by Congress.
Cite as 9 N.C. J.L. & Tech. 139 (2007) |
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I. Introduction
The Federal Circuit's recent opinion in In re Seagate Technology, L.L.C.
significantly modified the standard for determining whether infringement of a patent was willful.
The significance of this determination is that the Federal Circuit, in its main line of cases, has interpreted willfulness as a necessary rather than a sufficient condition for awarding enhanced damages under 35 U.S.C. § 284.
This enhanced damages doctrine has been controversial and inconsistently applied since its origin, with a main source of the controversy being conflicting views as to the purpose of enhanced damages.
As Judge Arthur Gajarsa noted in his concurring opinion in Seagate, the doctrine has no basis in the text or legislative history of the various Patent Acts,
nor is it justified by other equitable remedies available under title 35
or by enhanced damages available under other titles of federal statutes. The Supreme Court's recent decision in eBay Inc. v. MercExchange, L.L.C.
on the availability of permanent injunctions under 35 U.S.C. § 283 strongly counsels courts to avoid unsupported statutory interpretations creating per se rules that conflict with general principles of equity.
Thus, ample support exists for changing the relation between willfulness and enhanced damages. This Comment proposes a flexible judicial approach that incorporates, but is not limited by, willfulness. The House of Representatives has proposed a more structured, rule-based approach in the Patent Reform Act of 2007,
which this Comment briefly examines. Part II of this Comment presents the historical background of § 284 and the willfulness and enhanced damages doctrines up to and including Seagate. Part III presents arguments as to why the enhanced damages doctrine should be changed. Finally, in Part IV, the two proposed approaches are discussed and briefly compared.
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Last Updated ( Wednesday, 09 January 2008 )
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