Put differently, “[i]f the accused infringer's position is susceptible to a reasonable conclusion of no infringement, th[is] first prong of Seagate cannot be met.” Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1310 (Fed.Cir.2011). This threshold question of objective reasonableness “is best decided by the judge as a question of law....” Stryker Corp. v. Zimmer, Inc., 782 F.3d 649, 661 (Fed.Cir.2014) (quoting Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1007 (Fed.Cir.2012)). That rule applies most cleanly where an alleged infringer presents a reasonable defense premised entirely on a legal issue, such as claim construction.

Under the first prong, "the patentee has the burden of showing 'by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.'" Stryker Corp. v. Zimmer, Inc., 782 F.3d 649, 660 (Fed. Cir. 2015) (citing Seagate, 497 F.3d at 1371)), cert. granted, 136 S. Ct. 356 (2015). In other words, "the 'objective' prong of Seagate tends not to be met where an accused infringer relies on a reasonable defense to a charge of infringement."

In 2010, Stryker sued Zimmer for patent infringement. 782 F.3d 649, 653 (C.A.Fed.2015). The jury found that Zimmer had willfully infringed Stryker's patents and awarded Stryker $70 million in lost profits.

We affirmed the jury's findings that the patents were valid and infringed, and the jury's award of damages to plaintiff-appellees Stryker Corporation, Stryker Puerto Rico, Ltd., and Stryker Sales Corporation (collectively "Stryker"). Stryker Corp. v. Zimmer, Inc. , 782 F.3d 649, 653 (Fed.Cir.2014). However, applying the then-controlling test for willful infringement and enhanced damages under In re Seagate Technology, LLC , 497 F.3d 1360 (2007)(en banc), we reversed the jury's willfulness finding and vacated the associated award of treble damages and attorneys' fees. Stryker Corp. , 782 F.3d at 660–62.

The Court has concluded, supra, that Communique's motion for summary judgment of direct infringement must be denied because a factfinder could reasonably find in favor of either party. “Objective recklessness will not be found where the accused infringer's ‘position is susceptible to a reasonable conclusion of no infringement.’ ” Stryker Corp. v. Zimmer, Inc . 782 F.3d 649, 660 (Fed.Cir.2015) (quoting Uniloc , 632 F.3d at 1310 ). This is true even if the jury ultimately finds infringement.

The court will hold in abeyance any decision on the request for rehearing en banc with respect to the first issue raised in Carnegie Mellon's petition, which seeks review of the panel's ruling on the enhancement of damages issue. The court will hold Carnegie Mellon's petition as to that issue pending the Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed.Cir.2014)cert. granted, ––– U.S. ––––, 136 S.Ct. 356, ––– L.Ed.3d –––– (2015) and Stryker Corp. v. Zimmer, Inc., 782 F.3d 649 (Fed.Cir.2015)cert. granted, ––– U.S. ––––, 136 S.Ct. 356, ––– L.Ed.3d –––– (2015). Carnegie Mellon's petition for rehearing en banc is otherwise denied.

(1) Appellees' petition is granted by the panel for the limited purpose of clarifying the discussion of the standard of review of the objective reckless prong of willful infringement. (2) The previous opinion in this appeal issued December 19, 2014 and reported at Stryker Corp. v. Zimmer, Inc., 774 F.3d 1349 (Fed. Cir. 2014) is withdrawn and replaced with the revised opinion accompanying this order. FOR THE COURT March 23, 2015

01 Communique Lab., Inc. v. Citrix Sys., Inc., 889 F.3d 735, 741-42 (Fed. Cir. 2018) (finding "nothing improper about this argument" in the alternative); Stryker Corp. v. Zimmer, Inc., 782 F.3d 649, 658 n.4 (Fed. Cir. 2015) (vacated on other grounds by Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016)) ("[N]othing precludes [defendant] from arguing for a narrower application of the limitation on the infringement context, while also arguing, in the alternative, that—if the district court were to disagree—the patent claim would be so broad as to be invalid.").

"Willfulness . . . consists of two elements: (1) an objective element that is often, but not always, a question of law, and (2) a subjective element that is inherently a question of fact, to be decided by the jury." Stryker Corp. v. Zimmer Inc., No. 1:10-CV-1223, 2013 WL 6231533, at *11 (W.D. Mich. Aug. 7, 2013) (citing Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012)), rev'd in part on other grounds, 782 F.3d 649 (Fed. Cir. 2014). WCM argues that IPS engaged in unreasonable conduct by failing to secure an outside legal opinion as to infringement or invalidity of WCM's patents. (ECF No. 294 at 3-4.)

Summary judgment may be granted, however, "where there exists no issue of material fact and the moving party is entitled to judgment as a matter of law." Stryker Corp. v. Zimmer, Inc., 782 F.3d 649, 657 (Fed. Cir. 2015) (citing Fed. R. Civ. P. 56(c)) (quotations and other citations omitted). Likewise, "a court may determine infringement on summary judgment when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device."