As of October 31, 2013, the Project on Commercializing Innovation is no longer active.
The Project is succeeded by the Hoover IP² Working Group on Intellectual Property, Innovation, and Prosperity. Hoover IP²

Chapter Ten – Remedies

Several remedies are available to patentees, including injunctions, compensatory damages, enhanced damages, and attorney’s fees.  The recent eBay and Seagate cases signaled substantial changes in this area of the law, and injunctions, enhanced damages, and attorney’s fees are now more difficult for patentees to obtain than they were historically.  The full impact of the eBay case is not yet known, however, and the district courts and the Federal Circuit continue to determine the contours of the law.



  1. For a thorough discussion of patent litigation at the International Trade Commission under § 337 of the Smoot-Hawley Tariff Act (codified as 19 U.S.C. 1337), see Peter S. Menell et al., Section 337 Patent Investigation Management Guide(forthcoming), draft available at
  2. In Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., No. 2010-1510 (Fed. Cir. June 14, 2012), the Federal Circuit revisited the willful infringement standard established in Seagate. The court held that the “objectively reckless” prong of the test for willful infringement is a matter of law and reviewed de novo on appeal. This is in tension with Seagate, which also established that recklessness must be proven by clear and convincing evidence, a standard normally only applied to issues of fact.
  3. Rule 11 Sanctions.  In Raylon, LLC v. Complus Data Innovations, Inc. the Federal Circuit reversed a district court’s holding that there was no Rule 11 violation and remanded for reconsideration of an award of attorneys fees under § 285.  No. 2011-1355 (Fed. Cir. Dec. 7, 2012).  The appellate court applied the Fifth Circuit’s Rule 11 standard, which is an objective standard that does not inquire into the motivations behind a filing.  Id. at 12.  Under that standard, the court found that the patentee’s proferred claim constructions were objectively frivolous.  Id. at 13.  The court noted that an attorney’s proposed claim construction is subject to Rule 11 because claim construction is a matter of law.  Id.  Although a losing construction may be nonfrivolous, “there is a threshold below which a claim construction is so unreasonable that no reasonable litigant could believe it would succeed, and thus warrants Rule 11 sanctions.”  Id. (quotation and citation omitted).  In particular, every claim of one of the patents in suit required a “display pivotally mounted on said housing,” which the patentee claimed included a “display being capable of being moved or pivoted relative to the viewer’s perspective,” which would include any portable device with a display.  Id.  The court found this construction to be contrary to all of the intrinsic evidence and the canons of claim construction and thus objectively frivolous.  Id.  The court also found the district court abused its discretion by failing to consider several other frivolous arguments made by the patentee in its Rule 11 analysis.  Id. at 14.

Additional Source Material