Willful Patent Infringement Demand

Enhanced Damages Up to 3x Under Halo v. Pulse

Understanding Willful Patent Infringement
35 U.S.C. § 284: "...the court may increase the damages up to three times the amount found or assessed." Enhanced damages are reserved for egregious cases of willful infringement where the infringer's conduct warrants punishment and deterrence.
What Is Willful Infringement?

Willful infringement occurs when a defendant:

  • Knew of the patent: Had actual knowledge of the patent's existence
  • Knew of infringement: Knew or should have known their conduct infringed
  • Continued anyway: Proceeded without good-faith basis to believe they didn't infringe or patent was invalid
Halo Electronics v. Pulse Electronics (2016)
The Halo Standard: The Supreme Court rejected the rigid Seagate two-part test and held that enhanced damages should be available in egregious cases of culpable behavior based on the totality of circumstances. Courts have broad discretion.
Old Standard (Seagate) New Standard (Halo)
Two-part test: (1) objective recklessness + (2) subjective knowledge Totality of circumstances; egregious misconduct
Clear and convincing evidence required Preponderance of evidence sufficient
Reasonable defense = no enhancement Existence of defense is one factor, not dispositive
Rigid, mechanical application District court discretion
Factors Indicating Willfulness
  • Deliberate copying: Defendant intentionally copied patented technology after seeing patent
  • Ignoring notice: Continued infringement after receiving cease-and-desist letter
  • No design-around effort: Made no attempt to avoid infringement
  • No opinion of counsel: Failed to obtain legal advice on infringement risk
  • Bad faith litigation conduct: Frivolous defenses, discovery abuse
  • Size and sophistication: Large company with legal resources ignored patent rights
  • Commercial success: Profited substantially from infringing product
Factors Against Willfulness Finding
  • Good-faith belief: Reasonable belief of non-infringement or invalidity
  • Opinion of counsel: Obtained competent legal opinion before infringement
  • Close case: Infringement or validity genuinely uncertain
  • Design-around efforts: Attempted to avoid infringement
  • Independent development: Developed technology independently, not copying
  • License negotiations: Engaged in good-faith licensing discussions
Post-Halo Landscape: While Halo made enhanced damages more accessible, they remain discretionary and courts still require egregious conduct. Mere knowledge of patent plus continued sales is usually insufficient without additional culpable behavior.
Enhanced Damages Analysis
Read Factors for Enhancement

Courts often apply the Read Corp. v. Portec, Inc. factors to determine whether and how much to enhance damages:

# Factor Analysis
1 Deliberate copying Did defendant intentionally copy the patented invention?
2 Investigation/good faith Did defendant investigate patent and form good-faith belief of non-infringement?
3 Litigation conduct Did defendant act in good faith during litigation?
4 Size and financial condition Defendant's ability to pay and need for deterrence
5 Closeness of case Was infringement clear or genuinely disputed?
6 Duration of misconduct How long did defendant continue infringing after notice?
7 Remedial action Did defendant take steps to stop infringement?
8 Motivation for harm Did defendant intend to harm patent owner?
9 Concealment Did defendant attempt to conceal misconduct?
Damages Multiplier
Multiplier Typical Circumstances
1x (no enhancement) Good-faith belief; close case; promptly ceased upon notice
1.5x Continued after notice but engaged in settlement talks; some mitigating factors
2x Deliberate copying; ignored demand letter; weak defenses
2.5x Egregious conduct; bad-faith litigation; concealment
3x (maximum) Intentional piracy; repeated infringement; harm to patent owner's market
Example Damages Calculation
Scenario: Infringer sold $5 million of infringing products. Reasonable royalty rate is 5%. Base Damages: $5,000,000 × 5% = $250,000 With 2x Enhancement: $250,000 × 2 = $500,000 With 3x Enhancement: $250,000 × 3 = $750,000 Plus: Attorney fees if exceptional case, prejudgment interest, permanent injunction
Attorney Fees – 35 U.S.C. § 285
"Exceptional Cases": Courts may award attorney fees in exceptional cases. After Octane Fitness v. ICON Health (2014), a case is exceptional if it "stands out from others" based on the totality of circumstances—including litigation misconduct, frivolous positions, or willful infringement.

Attorney fees and enhanced damages often go together because the same egregious conduct supports both findings.

Escalation Strategy for Willfulness
Building the Willfulness Record

Willfulness claims are strongest when you document a pattern of notice and continued infringement:

Step 1: Initial Notice Letter
Purpose: Establish actual knowledge of patent
Content: Identify patent, explain infringement, request cessation
Tone: Professional, offer dialogue
Delivery: Certified mail + email for proof of receipt
Step 2: Follow-Up (14-21 days later)
Purpose: Document continued infringement after notice
Content: Reference prior letter, note no response, escalate tone
Evidence: Document that infringer is still selling product
Warning: Explicitly warn of enhanced damages for willfulness
Step 3: Final Demand (14 days later)
Purpose: Last chance before litigation
Content: Summarize notice history, quantify damages exposure
Tone: Firm, clear litigation intent
Deadline: Short (7-10 days), specific date
Step 4: Litigation
Complaint: Allege willful infringement from outset
Discovery: Seek internal documents showing knowledge, lack of opinion
Motion: Move for enhanced damages and attorney fees post-trial
Documentation Best Practices
  • Send via certified mail: Obtain signed return receipt as proof of delivery
  • Email copy: Send identical letter via email for belt-and-suspenders delivery proof
  • Save evidence of continued sales: Screenshot website, purchase product after notice
  • Track timeline: Create log of all communications and defendant's continued activities
  • Preserve defendant's responses: Non-response is evidence; bad-faith responses even better
When to Escalate to Willfulness Demand
  • No response to initial demand: 14+ days of silence after receipt
  • Rejection without basis: Defendant denies infringement without substantive analysis
  • Continued sales: Evidence defendant is still selling infringing product
  • Bad faith negotiations: Defendant strings out discussions while continuing to sell
  • Prior relationship: Defendant knew of patent through prior dealings (ex-employee, licensee)
Proportionality: Willfulness escalation is appropriate for deliberate infringers who ignore good-faith attempts at resolution. Avoid using aggressive willfulness threats in close cases or against innocent small-business infringers—courts may view overreaching as patent owner misconduct.
Sample Willful Infringement Demand Letters
Sample 1: Second Notice – Escalation to Willfulness Warning
[Law Firm / Patent Owner] [Address] [Email / Phone] [Date] VIA CERTIFIED MAIL, RETURN RECEIPT REQUESTED AND EMAIL ([recipient email]) [Defendant Company] [Address] Attn: General Counsel / CEO Re: SECOND NOTICE – Willful Infringement of U.S. Patent No. [X,XXX,XXX] Dear [Recipient]: This is our second letter regarding [Defendant]'s infringement of U.S. Patent No. [X,XXX,XXX] (the "'XXX Patent"), owned by [Patent Owner]. PRIOR NOTICE By letter dated [First Letter Date], sent via certified mail (tracking number [XXXX]) and email, we notified [Defendant] that its [Product] infringes claims [1, 5, and 12] of the 'XXX Patent. We provided a detailed claim chart demonstrating infringement and demanded cessation. That letter was delivered on [Delivery Date], as confirmed by [signed return receipt / email read receipt / delivery confirmation]. FAILURE TO RESPOND It has now been [X] days since our letter was delivered. [Defendant] has not: • Responded to our demand; • Ceased manufacture or sale of the [Product]; • Contacted us to discuss resolution. Despite actual knowledge of the 'XXX Patent and [Defendant]'s infringement, [Defendant] continues to sell the [Product]. We confirmed ongoing sales as recently as [Date] via [purchase / website screenshot / retailer listing]. WILLFUL INFRINGEMENT [Defendant]'s continued infringement after receiving actual notice of the 'XXX Patent constitutes WILLFUL INFRINGEMENT under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). Willful infringement exposes [Defendant] to: • ENHANCED DAMAGES up to THREE TIMES (3×) compensatory damages under 35 U.S.C. § 284 • ATTORNEY FEES as this is now an exceptional case under 35 U.S.C. § 285 • PERMANENT INJUNCTION against future infringement Based on [Defendant]'s public sales data, we estimate [Defendant]'s current damages exposure at $[X]. With treble damages and attorney fees, total exposure could exceed $[3X + fees]. FINAL OPPORTUNITY This is [Defendant]'s final opportunity to resolve this matter before litigation. Within ten (10) days of this letter, [Defendant] must: 1. Confirm in writing that all manufacture, sale, marketing, and distribution of [Product] has ceased; 2. Provide a complete accounting of [Product] sales (units, revenue, profit) since [Date of First Notice]; 3. Propose adequate compensation for past infringement; 4. [Optional: Discuss licensing terms for future authorized sales]. If we do not receive a satisfactory response by [Deadline Date], [Patent Owner] will file a complaint for patent infringement in the United States District Court for the [District], seeking: • Compensatory damages (lost profits or reasonable royalty) • Enhanced damages for willful infringement • Attorney fees • Preliminary and permanent injunctive relief • Costs We will also consider ITC Section 337 proceedings to block importation of the [Product] if manufactured abroad. [Defendant]'s refusal to engage in good faith after receiving clear notice of infringement will be presented to the court as evidence of willfulness. Contact me immediately at [Phone/Email] to discuss resolution. Very truly yours, [Attorney Name] [Firm Name] Counsel for [Patent Owner] Enclosures: - Copy of First Demand Letter ([Date]) - Certified Mail Delivery Confirmation - Evidence of Continued Sales (Screenshots dated [Date]) cc: [Patent Owner]
Sample 2: Final Pre-Litigation Demand
[Law Firm Letterhead] [Date] VIA FEDERAL EXPRESS OVERNIGHT AND EMAIL [Defendant Company] [Address] Attn: Chief Executive Officer General Counsel Re: FINAL DEMAND – U.S. Patent No. [X,XXX,XXX] – Litigation Imminent Dear [CEO Name] and Counsel: NOTICE HISTORY [Patent Owner] has twice notified [Defendant] of patent infringement: • [Date 1]: Initial demand letter sent via certified mail and email, received [Date] • [Date 2]: Second notice, willfulness warning, sent via certified mail and email, received [Date] [Defendant] has not responded to either communication and continues to infringe. WILLFUL INFRINGEMENT ESTABLISHED The record now clearly establishes willful infringement: 1. KNOWLEDGE: [Defendant] received actual notice of the 'XXX Patent on [Date 1] 2. CONTINUED INFRINGEMENT: [Defendant] has sold [estimated units] of [Product] after notice 3. NO GOOD-FAITH BASIS: [Defendant] has not asserted any non-infringement or invalidity position 4. NO REMEDIAL ACTION: [Defendant] has not ceased sales, sought a license, or attempted design-around Under Halo v. Pulse, this conduct is precisely the type of egregious, willful infringement that warrants enhanced damages. DAMAGES EXPOSURE Conservative Aggressive Compensatory Damages: $[Amount] $[Amount] Enhanced Damages (3×): $[3× Amount] $[3× Amount] Estimated Attorney Fees: $[Amount] $[Amount] ----------- ----------- TOTAL EXPOSURE: $[Total] $[Total] FINAL DEMAND This is [Defendant]'s last opportunity to avoid federal litigation. By 5:00 PM [Timezone] on [Date – 7 days], [Defendant] must: □ Confirm cessation of all infringing activity □ Provide sales accounting since [First Notice Date] □ Make settlement offer of not less than $[Amount] If these conditions are not met, [Patent Owner] will file suit in the [U.S. District Court] on [Date] without further notice. All future correspondence should be directed to the undersigned. Direct contact with [Patent Owner] is not appropriate once litigation is imminent. [Attorney Name] [Firm] [Contact] cc: [Patent Owner] (via email)
Sample 3: Willfulness Demand – Deliberate Copyist
[Patent Owner] [Address] [Date] [Defendant] [Address] Re: Deliberate Copying of Patented Technology – U.S. Patent No. [X,XXX,XXX] Dear [Recipient]: [Patent Owner] owns U.S. Patent No. [X,XXX,XXX] covering [technology description]. We have evidence that [Defendant] deliberately copied this patented technology. EVIDENCE OF DELIBERATE COPYING Our investigation reveals: 1. [Defendant]'s founder/CTO [Name] previously worked at [Patent Owner / Licensee] from [Dates] with access to the patented technology; 2. [Defendant]'s [Product] was launched [X] months after [Name] departed, implementing the same patented approach; 3. [Defendant]'s technical specifications and marketing materials use terminology identical to [Patent Owner]'s patent claims; 4. [Defendant]'s source code/design documents [if known from public sources] appear to implement the patented method. This is not a case of independent development or innocent infringement. [Defendant] intentionally misappropriated [Patent Owner]'s patented innovation. CONSEQUENCES OF DELIBERATE COPYING Deliberate copying is the paradigm case of willful infringement. Under Halo v. Pulse, [Defendant]'s conduct warrants: • Maximum enhanced damages (3× compensatory damages) • Attorney fees as an exceptional case • Potential trade secret claims if confidential information was also taken • Possible personal liability for individuals involved in the copying DEMAND Given the deliberate nature of this infringement, [Patent Owner] demands: 1. Immediate cessation of all [Product] sales and development 2. Return or destruction of any materials derived from [Patent Owner]'s technology 3. Full accounting of development history and sales 4. [Compensation amount] settlement payment 5. Written acknowledgment of [Patent Owner]'s patent rights [Defendant] has fourteen (14) days to respond. Given the evidence of deliberate copying, [Patent Owner] will pursue this matter aggressively if not resolved. [Name] [Title] [Contact]
Sample 4: Response to Denial – Escalation
[Law Firm] [Address] [Date] [Defendant's Counsel] [Address] Re: Response to Your [Date] Letter – U.S. Patent No. [X,XXX,XXX] Dear Counsel: We received your letter of [Date] denying infringement on behalf of [Defendant]. INADEQUATE RESPONSE Your letter fails to provide any substantive basis for [Defendant]'s non-infringement position: • No claim construction analysis • No identification of which claim elements are allegedly missing • No citation to prior art supporting invalidity • No identification of any opinion of counsel A conclusory denial is not a good-faith defense. [Defendant] cannot avoid willfulness by simply asserting "we don't infringe" without analysis. OUR CLAIM CHART We provided a detailed claim chart with our initial demand. Your response does not address any element of that chart. Unless [Defendant] can identify specific claim elements that its [Product] does not practice, infringement remains established. WILLFULNESS IMPLICATIONS [Defendant]'s choice to deny infringement without substantive analysis—while continuing to sell the [Product]—strengthens our willfulness case: • [Defendant] has actual knowledge of the patent • [Defendant] has not obtained an opinion of counsel (or will not produce one) • [Defendant]'s denial is pretextual rather than good-faith • [Defendant] continues to profit from infringement This is precisely the type of "wanton" conduct that Halo identifies as warranting enhanced damages. PATH FORWARD We remain willing to discuss resolution. However, [Defendant] must: 1. Provide substantive non-infringement or invalidity analysis (claim-by-claim) 2. Cease sales pending resolution 3. Engage in good-faith settlement discussions If [Defendant] simply continues selling while hiding behind a conclusory denial, we will file suit and seek maximum enhanced damages and fees. Please respond with substantive analysis by [Date] or advise that [Defendant] is prepared for litigation. [Attorney Name]

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