What is the standard for willful patent infringement after Halo Electronics v. Pulse Electronics?
Deliberate or intentional infringement, proved by a preponderance of the evidence. Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), held that the Federal Circuit’s two-part test from In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), was unduly rigid and impermissibly encumbered the discretion that 35 U.S.C. section 284 grants district courts. The Court objected in particular that Seagate’s objective recklessness requirement excluded many of the most culpable offenders, because an infringer could escape by mounting a reasonable defense at trial even if it never acted on that defense or was unaware of it.
Halo also rejected the clear and convincing standard Seagate had applied, holding that patent infringement litigation has always been governed by a preponderance of the evidence standard and that enhanced damages are no exception. The Federal Circuit then stated the jury-facing test plainly in Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020): under Halo, the concept of willfulness requires a jury to find no more than deliberate or intentional infringement.
Does willful infringement require egregious conduct?
No — egregiousness belongs to the enhancement decision, not to the willfulness finding. The confusion came from Halo’s own language describing the sort of conduct warranting enhanced damages as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or characteristic of a pirate. A district court read the Federal Circuit as importing that language into the willfulness test, and in SRI International, Inc. v. Cisco Systems, Inc., 14 F.4th 1323 (Fed. Cir. 2021), the Federal Circuit clarified that it was not its intent to create a heightened requirement for willful infringement, because that sentence from Halo refers to conduct warranting enhanced damages rather than conduct warranting a finding of willfulness.
Knowledge of the patent remains essential. In the earlier appeal in the same litigation, SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295 (Fed. Cir. 2019), the court held the willfulness verdict unsupported for the period before the accused infringer received notice, because it was undisputed that it did not know of the patents until that date. That is why the notice letter, and the internal response to it, are so heavily contested — and why a patent owner’s own conduct before suit shapes the willfulness window as much as the defendant’s.
Which willfulness questions go to the jury and which go to the judge?
The jury decides whether the infringement was willful; the judge decides whether to enhance and by how much. Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc., 946 F.3d 1367 (Fed. Cir. 2020), addressed this directly in reviewing jury instructions, holding that the question of enhanced damages is addressed by the court once an affirmative finding of willfulness has been made, and that questions of whether conduct was “egregious behavior” or “worthy of punishment” are therefore not appropriate for jury consideration.
What Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc., 946 F.3d 1367 (Fed. Cir. 2020), did not do is reverse. It held the phrases “especially worthy of punishment” and “reserved for egregious behavior” erroneous in isolation, then held that the instruction taken as a whole gave reasonable clarity as to the correct test, affirmed, and expressly did not reach the question of harmless error. The durable point is the allocation rather than the outcome: a willfulness verdict does not carry enhancement with it. As the Federal Circuit put it in Presidio Components, Inc. v. American Technical Ceramics Corp., 875 F.3d 1369, 1382 (Fed. Cir. 2017), an award of enhanced damages does not necessarily flow from a willfulness finding.
How does a court decide whether to enhance damages under 35 U.S.C. section 284?
In its discretion, on the totality of the circumstances, asking whether the misconduct was egregious enough to warrant a punitive sanction. Section 284 says only that the court may increase the damages up to three times the amount found or assessed; Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), held that enhanced damages are generally reserved for egregious cases typified by willful misconduct and are not to be meted out in a typical infringement case, and that the decision is reviewed on appeal for abuse of discretion. What the Supreme Court declined to supply was a test: it prescribed no formula or set of criteria for egregiousness, leaving that to the district court’s discretion. Courts continue to structure the analysis around the factors collected in Read Corp. v. Portec, Inc., 970 F.2d 816, 826–27 (Fed. Cir. 1992), including the infringer’s behavior as a party to the litigation, its size and financial condition, motivation for harm, and the closeness of the case.
Two recent decisions show the range. In Halo Electronics, Inc. v. Pulse Electronics, Inc., Nos. 2023-1772, 2023-1966 (Fed. Cir. Feb. 28, 2025) (nonprecedential), the Federal Circuit affirmed a refusal to enhance despite a jury willfulness verdict, endorsing the district court’s treatment of that verdict as “but one factor” in deciding whether the case warranted extraordinary punishment. In SynQor, Inc. v. Vicor Corp., No. 2024-1879 (Fed. Cir. Feb. 13, 2026) (nonprecedential), the court affirmed the opposite result, holding that the jury’s infringement verdict and willfulness finding were supported by substantial evidence and that the district court’s orders enhancing damages and awarding attorney fees — which together raised a $6.5 million verdict to $25 million — were not an abuse of discretion. The Institute does not compute or project what enhancement would produce in any matter; what a measure yields belongs to our Economic Damages Institute.
What do opinions of counsel do, and what does relying on one waive?
An opinion of counsel is evidence about state of mind at the time of the challenged conduct, which is the period Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), identified as the relevant one when it said culpability is generally measured against the knowledge of the actor at the time of the challenged conduct. There is no obligation to obtain one. 35 U.S.C. section 298, added by the Leahy-Smith America Invents Act and applicable to civil actions commenced on or after January 14, 2013, provides that the failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure to present such advice to the court or jury, may not be used to prove willful infringement or intent to induce infringement.
Relying on one is a different matter, because asserting the advice-of-counsel defense waives privilege over communications on that subject. In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), bounded that waiver: as a general proposition, asserting the defense and disclosing opinion counsel’s opinions does not waive the attorney-client privilege for communications with trial counsel, and relying on opinion counsel’s work product does not waive work product immunity with respect to trial counsel — though the court left open that waiver could extend further where a party or its counsel engages in chicanery. Halo overruled Seagate’s willfulness test; it did not disturb that waiver holding. Structuring who advises on what, and when, is counsel’s decision and is far harder to fix later than to plan early.
How is willfulness different from an exceptional case fee award under section 285?
They are separate inquiries with separate subject matter. 35 U.S.C. section 285 provides that the court in exceptional cases may award reasonable attorney fees to the prevailing party, and Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), defined an exceptional case as one that stands out from others with respect to the substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated, to be determined case by case in the district court’s discretion on the totality of the circumstances, under a preponderance standard. Highmark Inc. v. Allcare Health Management System, Inc., 572 U.S. 559 (2014), decided the same day, held that an exceptional-case determination is reviewed on appeal for abuse of discretion.
So willfulness under section 284 looks at the infringer’s pre-suit state of mind and conduct with respect to the patent, while an exceptional case under section 285 more often turns on how the case itself was litigated, and it is available to a prevailing accused infringer as well as to a patent owner. The two can overlap in the evidence — in SRI International, Inc. v. Cisco Systems, Inc., 14 F.4th 1323 (Fed. Cir. 2021), the Federal Circuit reinstated the jury’s willfulness finding and the doubled damages award and separately affirmed the award of attorney fees under 35 U.S.C. section 285 — but they are decided under different standards, and one can be granted while the other is denied. Neither is an opinion this Institute offers on any particular matter; what the technical record would have to show is described in the infringement proof area, and the knowledge questions that drive both indirect infringement and willfulness are covered in what makes a claim chart actually prove infringement.