03/22/2016

Written By: David Youngkin

In Rosebud LMS Inc. V. Adobe Systems Incorporated the Federal Circuit affirmed the district court’s grant of summary judgement finding that Adobe Systems was not liable for pre-issuance damages because it had no actual notice of the application which issued as U.S. Patent No. 8,578,280.

11/15/2014
Category: Damages   
 
 
 
By: Abby Lin, Contributor 
 
TitleHighmark, Inc. v. Allcare Health Mgmt., No. 11-1219 (Fed. Cir. Sept. 5, 2014).
IssueThis case comes to us on remand from the Supreme Court, which vacated our earlier opinion in which we set aside the district court’s award of attorney fees to appellee Highmark, Inc. (Highmark)..
Highmark, at *2.
Holdings“[Per Supreme Court guidance, instead of de novo review,] an appellate court should review all aspects of a district court’s § 285 determination for abuse of discretion.” Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1747 (2014).
Id. at *4 (text added).
 
 
 
 
 
08/27/2014
Category: Damages  
 
 
 
 By: Eric Paul Smith, Contributor
 
TitleRectractable Tech., Inc. v. Becton Dickinson & Co., No. 2013-1567 (Fed. Cir. Jul. 7, 2014).
IssueWhether "[the Federal Circuit's] mandate, reversing the infringement verdict [for one product but not the other], required the district court to conduct new damages proceedings because the original judgment is inconsistent with that mandate."
Retractable Tech. at *4.
Holding"The damages award was within the scope of the appealed judgment and thus was incorporated into the mandate when Becton failed to raise the issue of a remand to consider parsing damages by product." Id. at *8. "[T]he mandate rule forecloses the relief that Becton seeks . . . ." Id. at *11.
 
 
08/02/2014
Category: Damages   
 
 
 
By: Karthik Subramanian, Contributor 
 
TitleCartner v. Alamo Group, Inc., No. 2013-1293, 1314 (Fed. Cir. April 11, 2014) (non-precedential).
Issues"[1] Cartner argues its infringement contentions were objectively reasonable and that the district court clearly erred in finding the case exceptional. [2] Alamo cross appeals the attorney fees award, contending Cartner’s infringement arguments became frivolous long before this court’s invalidity decision, and arguing the fee award should be calculated from an earlier date.”
Cartner, at *8 (text added).
Holdings"[1] Because the district court properly found this case exceptional [in light of Cartner’s frivolous infringement arguments and his bad faith conduct regarding equivalents], and [2] because it did not abuse its discretion in determining the fee award [by selecting one date applicable to all accused products], this court affirms.”
Id. at *2 (text added).
 
 
 
05/22/2014
Category: Damages  
 
 
 
  By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleMonsanto Co. v. E.I. DuPont de Nemours and Co., No. 2013-1349 (Fed. Cir. May 9, 2014).
IssueDuPont contends that interpreting the objective meaning of the License was a question of law and that the district court improperly sanctioned DuPont for making reasonable legal arguments that section 3.01 of the License permitted stacking and commercialization of glyphosate-tolerant traits.
Monsanto at *11.
HoldingWe agree with Monsanto that the district court did not abuse its discretion in imposing narrowly-tailored sanctions on DuPont for making factual misrepresentations concerning its subjective understanding of the License in order to advance its reformation counterclaims [because DuPont asserted said counterclaim on the grounds that the parties original intent was to have no stacking restrictions in the License, while at the same time using attorney-client privilege to withhold documents showing that DuPont in fact was aware that the contract included stacking restrictions].
Id. at *11-12 (text added). 
 
 
 
04/30/2014
Category: Damages 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleOctane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184 (April 29, 2014).
IssueSection 285 of the Patent Act authorizes a district court to award attorney’s fees in patent litigation. It provides, in its entirety, that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” […] In Brooks Furniture Mfg., Inc. v. Du­ tailier Int’l, Inc., 393 F. 3d 1378 (2005), the United States Court of Appeals for the Federal Circuit held that “[a] case may be deemed exceptional” under §285 only in two limited circumstances: “when there has been some material inappropriate conduct,” or when the litigation is both “brought in subjective bad faith” and “objectively baseless.” […] The question before us is whether the Brooks Furniture framework is consistent with the statutory text.
Octane Fitness, LLC at *1 (internal citations omitted).
HoldingWe hold, then, that an “exceptional” case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is “exceptional” in the case-by-case exercise of their discretion, considering the totality of the circumstances.
Id. at *7-8.
 
 
 
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Octane Fitness v. Icon Health & Fitnes by clicking here.
 
 
04/30/2014
Category: Damages 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleHighmark, Inc. v. Allcare Health Mgmt. Syst., Inc., No. 12-1163 (April 29, 2014).
IssueWe granted certiorari to determine whether an appellate court should accord deference to a district court’s determination that litigation is “objectively baseless.”
Highmark, Inc. at *1.
HoldingWe therefore hold that an appellate court should apply an abuse-of-discretion standard in reviewing all aspects of a district court’s §285 determination. Although questions of law may in some cases be relevant to the §285 inquiry, that inquiry generally is, at heart, “rooted in factual determinations,”
Id. at *5.
 
 
 
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Highmark v. Allcare Health by clicking here.
 
 
03/17/2014
Category: Damages
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleTherasense, Inc. v. Becton, Dickinson and Co., No. 2012-1504 (Fed. Cir. March 12, 2014).
Issues
[1] Becton and Nova first contend that they are entitled to itemized appellate and remand fees because the district court’s August 21, 2008 exceptional case finding “permeated” the appeal and remand phases. They argue that these additional fees and costs should receive treatment independent of those awarded at the trial phase.
Therasense at *5.
[2] As an alternative theory, Becton and Nova assert that Abbott’s appeal and petition for rehearing en banc qualify independently as exceptional circumstances [that justify additional itemized appellate and remand fees].
Id. at *6 (text added).
Holdings
[1] [T]he district court did not err in denying Becton and Nova’s motion for additional fees predicated on the vacated determination of inequitable conduct [because the district court’s pre-existing inequitable conduct ruling was not “upheld on appeal” as required by its district court fee order].
Id. at *6 (text added).
[2] Becton and Nova present zero evidence of bad faith. Expressions of outrage and suspicion in the form of attorney argument are not evidence of bad faith. Nor does the mere act of pursuing appellate review—available as a matter of right and frequently necessary to preserve future rights of appeal—by itself suggest an abuse of the legal system.
Id. at *7.
 
03/03/2014
Category: Damages
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
03/03/2014
Category: Damages
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
02/17/2014
Category: Damages
 
 
 
By: Abby Lin, Contributor 
 
TitleCBT Flint Partners, LLC v. Return Path, Inc., No. 2013-1036 (Fed. Cir. Dec. 13, 2013).
Issues
[1] Congress changed the language as of October 13, 2008, to encompass electronically stored information as well as information on paper. Section 1920(4) now covers “[f]ees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case.” 28 U.S.C. § 1920(4) (emphasis added). The Eleventh Circuit has not addressed section 1920(4) since it was amended [and the district court in this case interprets new Section 1920(4) as expanding the scope of its previous version].
CBT at *5 (text added).
[2] [Due to the change in language of 28 U.S.C. §1920(4) covering fees from “copies of papers” to “the costs of making copies of any materials where the copies are necessarily obtained for use in the case”], what constitutes “making copies” for the purposes of sifting the activities that go into producing electronic documents [In other words, does Section 1920 allow recovery for e-discovery costs?]. Id. at *6 (text added).
Holdings
[1] [W]e see no significance in the change from “copies” to “making copies”, a change that appears to reflect no more than the linguistic aim of using activity-describing phrases (“exemplification,” “making copies”) on both sides of the conjunction in section 1920(4). Id. at *6.
[2] [C]osts incurred in preparing to copy [such as discussions, planning, meetings] are not recoverable. Id. at *14(text added). [Costs of activities that] are part of the large body of discovery obligations, mostly related to the document-review process [are not included by Congress in section 1920(4)]. Id. at *15 (text added).
 
12/28/2013
Category: Damages
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleKilopass Tech., Inc. v. Sidense Corp., No. 2013-1193 (Fed. Cir. Dec. 26, 2013).
Issues
[1] Sidense first faults the district court for its reliance on our decision in MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012), which, in Sidense’s view, requires too great a showing to establish subjective bad faith [in determining whether to award attorneys’ fees].
Kilopass Tech., Inc. at *12-13 (text added).
[2] Sidense also argues that it should not even be required to prove that Kilopass acted in bad faith to show exceptionality. Proof of objective baselessness, in Sidense’s view, should be enough to demonstrate exceptionality under § 285. Sidense does not contend that a finding of exceptionality predicated on objective baselessness would demand that the district court shift fees, only that it should permit it to do so in its discretion in light of the totality of the circumstances.
Id. at *17-18.
[3] Sidense also contends that it should not be required to prove exceptionality by clear and convincing evidence, as our law currently requires. According to Sidense, proof by a preponderance of the evidence should be sufficient under § 285.
Id. at *23.
Holdings
[1] [T]o the extent that the district court did require actual knowledge of objective baselessness, it erred. The language from [...] MarcTec that Sidense interprets as requiring actual knowledge does not reflect this court’s law governing § 285,[…] and is dictum.
Kilopass Tech., Inc. at *12-13.
[2] While Sidense’s arguments may constitute good faith assertions that our law should be something other than it is, as a panel, we are not able to entertain them. We must, and do, apply our current law, which requires proof of objective baselessness and subjective bad faith as a prerequisite to a finding of exceptionality—the first prong in the court’s § 285 inquiry.
Id. at *22.
[3] "In Reactive Metals & Alloys Corp. v. ESM, Inc., 769 F.2d 1578 (Fed. Cir. 1985), we cited Hycor for the proposition that “[t]he quantum of proof required to prove bad faith conduct is clear and convincing evidence.” […] The pronouncement in Reactive Metals, however, seems to reflect an unneeded expansion of the clear and convincing burden to all aspects of the § 285 analysis." Kilopass Tech., Inc. at *24. "Again, while we cannot fault Sidense for making good faith arguments asking that we change our current law, as a panel we may not indulge it [and hold that the standard of proof for subjective bad faith in the present situation is clear and convincing.]." Id. at *24 (text added).
 
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