In Anneal v Almirall, the Federal Circuit held that a court cannot award attorney fees under 35 U.S.C. § 285 for work incurred on an inter partes review (IPR) and on appeal from IPR decision, because 35 U.S.C. § 285 is limited to "judicial proceedings."
Copyright © 2020 Robert Moll. All rights reserved.
Showing posts with label 35 USC 285. Show all posts
Showing posts with label 35 USC 285. Show all posts
Wednesday, June 17, 2020
Tuesday, June 9, 2020
Federal Circuit - Munchkin v. Luv n’ Care - Reverses Attorney Fee Award
In Munchkin, Inc. v. Luv n’ Care Ltd. the Federal Circuit reversed a district court's award of attorney’s fees to defendant Luv n’ Care, because the court had abused its discretion in determining the case "exceptional."
The Federal Circuit noted Munchkin's attorney fee motion failed to present facts and the analysis required to establish "Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional."
See 35 U.S.C. § 285 and 15 U.S.C.§ 1117(a) which require an "exceptional case" to award attorney fees to a prevailing party in patent and trademark cases.
Copyright © 2020 Robert Moll. All rights reserved.
The Federal Circuit noted Munchkin's attorney fee motion failed to present facts and the analysis required to establish "Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional."
See 35 U.S.C. § 285 and 15 U.S.C.§ 1117(a) which require an "exceptional case" to award attorney fees to a prevailing party in patent and trademark cases.
Copyright © 2020 Robert Moll. All rights reserved.
Thursday, December 26, 2019
Federal Circuit - Intellectual Ventures v. Trend Micro - Attorney Fees Awards, 35 USC § 285
In Intellectual Ventures v. Trend Micro, the Federal Circuit remanded a case to the district court to reconsider Trend Micro's attorney fees award under the proper legal standard.
Under 35 USC § 285, a court may award attorney fees to the prevailing party in "an exceptional case." An exceptional case stands out from others with respect to the (1) strength of a party’s litigating position (considering the law and facts) or (2) unreasonable manner in which the case was litigated.
Intellectual Ventures (IV) sued Trend Micro and Symantec for infringement of US patents, including US Patent No. 6,460,050, related to filtering data files (e.g., email messages).
The Symantec action proceeded first. During the claim construction and throughout pretrial IV's expert opined the "characteristic" of documents in claims should be interpreted as including "bulk email." After the court adopted the expert's opinion, the expert changed his opinion after he talked to IV's attorneys.
After the Symantec trial was complete, Trend Micro moved for clarification on claim construction and the IV attorney argued the expert's opinion had not changed. Trend Micro then moved for attorney fees due to the expert's changed opinion. The district court granted attorney fees of $444,051. It didn't appreciate the expert's last minute change and the attorney arguing nothing had changed.
The Federal Circuit vacated the attorney award stating the court must determine whether the case overall is exceptional not whether an isolated action is exceptional. Notably, the district court granted attorney fees, but conceded IV's case was not overall unreasonable. The district court relied on the circumstances surrounding the changed expert's opinion alone.
I agree that isolated mistakes must be viewed within the totality of the circumstances. Experts may change opinions and attorneys misstate their position, but the court must consider whether the overall case and manner of litigation is reasonable before granting attorney fees. Otherwise, it encourages parties to seek attorney fees for isolated acts that are "exceptional" with respect to the overall case.
Copyright © 2019 Robert Moll. All rights reserved.
Under 35 USC § 285, a court may award attorney fees to the prevailing party in "an exceptional case." An exceptional case stands out from others with respect to the (1) strength of a party’s litigating position (considering the law and facts) or (2) unreasonable manner in which the case was litigated.
Intellectual Ventures (IV) sued Trend Micro and Symantec for infringement of US patents, including US Patent No. 6,460,050, related to filtering data files (e.g., email messages).
The Symantec action proceeded first. During the claim construction and throughout pretrial IV's expert opined the "characteristic" of documents in claims should be interpreted as including "bulk email." After the court adopted the expert's opinion, the expert changed his opinion after he talked to IV's attorneys.
After the Symantec trial was complete, Trend Micro moved for clarification on claim construction and the IV attorney argued the expert's opinion had not changed. Trend Micro then moved for attorney fees due to the expert's changed opinion. The district court granted attorney fees of $444,051. It didn't appreciate the expert's last minute change and the attorney arguing nothing had changed.
The Federal Circuit vacated the attorney award stating the court must determine whether the case overall is exceptional not whether an isolated action is exceptional. Notably, the district court granted attorney fees, but conceded IV's case was not overall unreasonable. The district court relied on the circumstances surrounding the changed expert's opinion alone.
I agree that isolated mistakes must be viewed within the totality of the circumstances. Experts may change opinions and attorneys misstate their position, but the court must consider whether the overall case and manner of litigation is reasonable before granting attorney fees. Otherwise, it encourages parties to seek attorney fees for isolated acts that are "exceptional" with respect to the overall case.
Copyright © 2019 Robert Moll. All rights reserved.
Wednesday, September 17, 2014
Professor Robin Feldman Coming of Age for the Federal Circuit
Tonight, I just finished reading Hasting Law Professor Robin Feldman's article Coming of Age for the Federal Circuit, which discusses the patent law tug-of-war that is going on between the US Supreme Court and the Federal Circuit.
Here's the abstract:
"This has been a watershed year for the Federal Circuit, with the Supreme Court granting cert. in more patent cases than any term since the Circuit’s creation in 1982. Moreover, in case after case this year, the Justices soundly and unanimously rejected the Federal Circuit’s logic.
Some attribute the tension between the Federal Circuit and the Supreme Court to a clash between rules and standards, but that view misses the heart of what is occurring. Rather, a strong message echoes through the six Supreme Court decisions. It is a message about restraint, about carefully constructed logic, and about coming into the fold of judicial decision-making. This is a coming of age for the Federal Circuit — or at least the Supreme Court seems determined to coax, cajole and, when necessary, club the Federal Circuit into coming of age.
This article examines the messages evident in recent Supreme Court decisions and evaluates whether the Court appears to be gaining ground. Although some indications are positive, others suggest that the Federal Circuit may not be entirely ready to relinquish its role as the judiciary’s enfant terrible."
The article is thought provoking, but if the Federal Circuit is the "terrible child," the Supreme Court may just be that "parent" who issues vague orders then "punishes" the child for "disobedience" at least on the application of the abstract idea. The Supreme Court on patent eligibility law (e.g., Alice v. CLS Bank) is unclear and that is why many are struggling with it. It is easy to blame the Federal Circuit for being recalcitrant, but the early Supreme Court patent eligibility cases have plenty of flaws. For example, Benson seems to not understand the claims recite hardware such as registers and mask bits and that the patent owner stipulated that the hex to binary conversion algorithm was executed in special hardware. Justice Douglas, who never did find that patent he liked, ignores the hardware and asserts the claim totally preempts the algorithm. In the end, although we are talking about capable judiciary, it may be time to note Benson said software patent protection (or not) is a policy question best decided by Congress.
Copyright © 2014 Robert Moll. All rights reserved.
Here's the abstract:
"This has been a watershed year for the Federal Circuit, with the Supreme Court granting cert. in more patent cases than any term since the Circuit’s creation in 1982. Moreover, in case after case this year, the Justices soundly and unanimously rejected the Federal Circuit’s logic.
Some attribute the tension between the Federal Circuit and the Supreme Court to a clash between rules and standards, but that view misses the heart of what is occurring. Rather, a strong message echoes through the six Supreme Court decisions. It is a message about restraint, about carefully constructed logic, and about coming into the fold of judicial decision-making. This is a coming of age for the Federal Circuit — or at least the Supreme Court seems determined to coax, cajole and, when necessary, club the Federal Circuit into coming of age.
This article examines the messages evident in recent Supreme Court decisions and evaluates whether the Court appears to be gaining ground. Although some indications are positive, others suggest that the Federal Circuit may not be entirely ready to relinquish its role as the judiciary’s enfant terrible."
The article is thought provoking, but if the Federal Circuit is the "terrible child," the Supreme Court may just be that "parent" who issues vague orders then "punishes" the child for "disobedience" at least on the application of the abstract idea. The Supreme Court on patent eligibility law (e.g., Alice v. CLS Bank) is unclear and that is why many are struggling with it. It is easy to blame the Federal Circuit for being recalcitrant, but the early Supreme Court patent eligibility cases have plenty of flaws. For example, Benson seems to not understand the claims recite hardware such as registers and mask bits and that the patent owner stipulated that the hex to binary conversion algorithm was executed in special hardware. Justice Douglas, who never did find that patent he liked, ignores the hardware and asserts the claim totally preempts the algorithm. In the end, although we are talking about capable judiciary, it may be time to note Benson said software patent protection (or not) is a policy question best decided by Congress.
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, March 2, 2014
Supreme Court - Award of Attorney Fees, 35 USC 285 - Professor Mann's Article on Octane Fitness and Highmark Hearings
Today, the award of attorneys fees is a hot issue in patent law. 35 USC 285 states that "the court in exceptional cases may award attorney fees to the prevailing party," but courts rarely award attorneys under 35 USC 285. Thus, some corporations are lobbying Congress to redefine that standard to increase the risk of paying "humongous" attorney fees to cut off patent licensing / troll activities.
Redefining the standard may just generate uncertainty and not help long term. Another approach is to wait for the Supreme Court to clarify the standard. Last week the Supreme Court conducted hearings to consider the substantive standard for awarding attorney fees in Octane Fitness and the standard of review for appeals in Highmark.
I started to read through the Supreme Court hearing transcripts this weekend, but found a nice argument recap by Columbia law professor Ronald Mann Justices hard to read in twin disputes about attorney's fees in patent litigation, which can help one navigate where we are going in this area of the law.
Copyright © 2014 Robert Moll. All rights reserved.
Redefining the standard may just generate uncertainty and not help long term. Another approach is to wait for the Supreme Court to clarify the standard. Last week the Supreme Court conducted hearings to consider the substantive standard for awarding attorney fees in Octane Fitness and the standard of review for appeals in Highmark.
I started to read through the Supreme Court hearing transcripts this weekend, but found a nice argument recap by Columbia law professor Ronald Mann Justices hard to read in twin disputes about attorney's fees in patent litigation, which can help one navigate where we are going in this area of the law.
Copyright © 2014 Robert Moll. All rights reserved.
Saturday, September 28, 2013
US Supreme Court Certiorari - Octane Fitness v. Icon Health and Fitness - Exceptional Cases Under 35 USC 285 and Attorney Fees
On September 5, Mary Dwyer of the SCOTUS Blog stated the petition of the day relates to the Federal Circuit's nonprecedential decision in Octane Fitness v. Icon Health and Fitness. If the Supreme Court takes the case, it may increase the likelihood that a losing patent assertion entity case is held exceptional under 35 USC 285 resulting in an attorney fee award.
The issue is framed: Whether the Federal Circuit’s promulgation of a rigid and exclusive two-part test for determining whether a case is “exceptional” under 35 U.S.C. § 285 improperly appropriates a district court’s discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court’s precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants.
See the papers, orders, and proceedings at SCOTUS blog page.
Updated October 1, 2013: Petition Granted.
Copyright © 2013 Robert Moll. All rights reserved.
The issue is framed: Whether the Federal Circuit’s promulgation of a rigid and exclusive two-part test for determining whether a case is “exceptional” under 35 U.S.C. § 285 improperly appropriates a district court’s discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court’s precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants.
See the papers, orders, and proceedings at SCOTUS blog page.
Updated October 1, 2013: Petition Granted.
Copyright © 2013 Robert Moll. All rights reserved.
Wednesday, June 5, 2013
NY Times - Make Patent Trolls Pay in Court - A Comment
Today, in Make Patent Trolls Pay in Court, Federal Circuit Chief judge Randall Rader and law professors Colleen Chien and David Hricik note patent trolls have strategic advantages over companies since patent trolls (1) don't make anything so cannot be countersued; (2) have no concern with business reputation as litigation is their business; (3) can defer attorney fees unless they win due to contingency fee representation; and (4) total litigation costs can be low even when they lose. However, Professor Crouch notes in Fight Litigation Misconduct, But Not Through Hyperbole the typical costs of a patent troll that loses is not a court filing fee. Yet, these advantages often lead defendants to settle even when a patent is of doubtful validity.
While Congress is considering a set of new bills, such as End Anonymous Patents Act, Patent Quality Improvement Act of 2013, and SHIELD Act, to address patent trolls, the Chief judge Rader notes that courts already have certain laws to curtail the advantages of patent trolls. For example, judges can dismiss an unworthy patent case at the outset under Federal Rule of Civil Procedure Rule 11. Yet this rarely happens. For cases that go further, 35 USC 285 gives judges the authority to shift a defendant's attorney fees to the abusive patent troll for payment if the plaintiff knew the action is being brought in bad faith and the case is objectively baseless. Given attorney fees dwarf all other costs of litigation this would give patent trolls a reason to pause on the case with no merit.
Yet, judges rarely shift the defendant's attorney fees to the patent owner. Part of the problem is the Federal Circuit's "subjective bad faith and objectively baseless" standard. It is difficult. Another is the customary slack district court judges give trolls before they are willing to find a case "exceptional" as defined the Federal Circuit's interpretation of 35 USC 285 and shift the attorney fees. In fact in 2011, federal judges awarded fee shifts only 0.7% of the time (20 times out of 3,000 cases). Think about it, only 1 case in 100 is without merit? The media makes it sound like this is not the case.
Thus, the article suggests the solution is right in front of us. Just enforce the existing laws such as 35 USC 285 to curb abusive patent litigation rather than await passage of bills, which seem like hasty band-aids with obvious flaws.
Copyright © 2013 Robert Moll. All rights reserved.
While Congress is considering a set of new bills, such as End Anonymous Patents Act, Patent Quality Improvement Act of 2013, and SHIELD Act, to address patent trolls, the Chief judge Rader notes that courts already have certain laws to curtail the advantages of patent trolls. For example, judges can dismiss an unworthy patent case at the outset under Federal Rule of Civil Procedure Rule 11. Yet this rarely happens. For cases that go further, 35 USC 285 gives judges the authority to shift a defendant's attorney fees to the abusive patent troll for payment if the plaintiff knew the action is being brought in bad faith and the case is objectively baseless. Given attorney fees dwarf all other costs of litigation this would give patent trolls a reason to pause on the case with no merit.
Yet, judges rarely shift the defendant's attorney fees to the patent owner. Part of the problem is the Federal Circuit's "subjective bad faith and objectively baseless" standard. It is difficult. Another is the customary slack district court judges give trolls before they are willing to find a case "exceptional" as defined the Federal Circuit's interpretation of 35 USC 285 and shift the attorney fees. In fact in 2011, federal judges awarded fee shifts only 0.7% of the time (20 times out of 3,000 cases). Think about it, only 1 case in 100 is without merit? The media makes it sound like this is not the case.
Thus, the article suggests the solution is right in front of us. Just enforce the existing laws such as 35 USC 285 to curb abusive patent litigation rather than await passage of bills, which seem like hasty band-aids with obvious flaws.
Copyright © 2013 Robert Moll. All rights reserved.
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