Infringement Prior to Notice of Patent Could Not be Willful

In SRI International, Inc., v. Cisco Systems, Inc., [2017-2223] (March 20, 2019), the Federal Circuit affirmed the district court’s denial of summary judgment of ineligibility, adopt its construction of “network traffic data,” and affirmed its summary judgment of no anticipation. The Federal Circuit vacated and remanded the district court’s denial of judgment as a matter of law of no willful infringement, and therefore vacate the district court’s enhancement of damages. The Federal Circuit also vacated the district court’s award of attorneys’ fees and remanded for recalculation. Finally, the Federal Circuit affirmed the district court’s award of ongoing royalties on postverdict sales of products that were actually found to infringe or are not colorably different.

The litigation involved U.S. Patent Nos. 6,484,203 and 6,711,615 directed to network intrusion detection. The Federal Circuit rejected Cisco’s assertion that the claims are just directed to analyzing data from multiple sources to detect suspicious activity. The Federal Circuit found that instead, the claims are directed to an improvement in computer network technology. The focus of the claims is on the specific asserted improvement in computer capabilities—that is, providing a network defense system that monitors network traffic in real-time to automatically detect large-scale attacks. The Federal Circuit concluded that the claims are not directed to an abstract idea under step one of the Alice analysis, and thus did not reach step two.

On claim construction, the Federal Circuit held that SRI’s statements in the prosecution history do not invoke a clear and unmistakable surrender of all preprocessing, including decryption, decoding, and parsing. Accordingly, the Federal Circuit agreed with the district court’s construction of “network traffic data” to mean “data obtained from direct examination of network packets.”

On the issue of anticipation, the Federal Circuit held that SRI’s statements in the prosecution history did not invoke a clear and unmistakable surrender of all preprocessing, including decryption, decoding, and parsing. Accordingly, the Federal Circuit agreed with the district court’s construction of “network traffic data” to mean “data obtained from direct examination of network packets.” On this record, the Federal Circuit concluded that summary judgment was appropriate. The prior art did not expressly disclose directly examining network packets as required by the claims—especially not to obtain data about network connection requests.

On the denial of JMOL on the issue of willfulness, the Federal Circuit agreed that the jury’s finding that Cisco willfully infringed the patents-in-suit prior to receiving notice thereof is not supported by substantial evidence and therefore vacated and remanded them. Among other things, SRI argued that Cisco employeees did not read the patent before their depositions, but the Federal Circuit noted that it is undisputed that these Cisco employees were engineers without legal training. Given Cisco’s size and resources, the Federal Circuit said it was unremarkable that the engineers—as opposed to Cisco’s in-house or outside counsel—did not analyze the patents-in-suit themselves. The Federal Circuit also noted that it was undisputed that Cisco did not know of SRI’s patent until SRI sent its notice letter to Cisco, and that this notice letter was sent years after Cisco independently developed the accused systems and first sold them. Under these circumstances the Federal Circuit vacated the finding of willfulness prior to the Notice letter, and remanded for the district court to determine whether the finding of willfulness after the Notice letter was supported by substantial evidence. The Federal Circuit also vacated the award of enhanced damages and remanded for further consideration along with willfulness.

The Federal Circuit vacated the district court’s award of attorneys’ fees under § 285, remanding solely for recalculation. The Federal Circuit found no error in the district court’s determination that the case was exceptional, agreeing that Cisto had “crossed the line in several regards.” However, there were several entries included by mistake, and the Federal Circuit remanded only for removal of attorney hours clearly included by mistake and consequent recalculation of reasonable attorneys’ fees.

Finally, on the issue of on-going royalty, the Federal Circuit found that the district court did not abuse its discretion in awarding a 3.5% compulsory license for all post-verdict sales. Cisco complained that the court was obligated to consider its design-arounds. The Federal Circuit agreed that Cisco was untimely, finding Cisco did not redesign its products until after trial, and Cisco did not file its motion to supplement until after completion of post-trial briefing.

Exceptional Does Not Mean “Wrong” — Otherwise Every Case Would be Exceptional

In Spineology Inc. v. Wright Medical Technology, Inc., [2018-1276] (December 14, 2018), the Federal Circuit affirmed the denial of Wright Medical Technology, Inc.’s motion for attorney fees under 35 U.S.C. § 285, finding no abuse of discretion.

The district court issued a claim construction order in, acknowledging that the parties disputed construction of the term “body,” but it declined to
adopt either party’s construction. Wright and Spineology then filed cross-motions for summary judgment on infringement.  Recognizing the alleged infringement depended on how “body” was construed, the district court
construed “body” consistent with Wright’s noninfringement position and granted Wright’s motion.  Wright then moved for attorney fees, arguing Spineology’s proposed construction of “body,” its damages theories, and its litigation conduct rendered this case “exceptional” under § 285. The district court denied the motion, determining that, while ultimately the court rejected Spineology’s proposed construction, it was not so meritless as to render the case exceptional.  It similarly determined the arguments
made by Spineology to support its damages theory were not so meritless as to render the case exceptional.  The district court concluded that n]othing about this case stands out from others with respect to the substantive strength of Spineology’s litigating position or the manner in which
the case was litigated.

The Federal Circuit agreed with the district court that, while Spineology’s proposed construction of “body” was ultimately rejected at summary judgment, the attempt was not so meritless as to render the case exceptional.  The Federal Circuit stressed that a party’s position ultimately need not be correct for them not to standout.   The Federal Circuit noted that Wright was hardly in a position to complain about Spineology’s continuing to pursue a construction not adopted by the district court in the claim construction order, since the district court declined to adopt Wright’s proposed construction as well.

Even though the case was resolved in summary judgment, Wright complained about Spineology’s damages theory,.  While conceding that perhaps Spineology’s damages theories would not have prevailed, the Federal Circuit said “a strong or even correct litigating position is not the standard by which we assess exceptionality.”

The Federal Circuit noted that Wright was asking the court to basically decide the damages issues mooted by summary judgment in order to determine whether it ought to obtain attorney fees for the entire litigation. The Federal Circuit refused to do so — it will not force the district court, on a motion for attorney fees, to conduct the trial it never had, and the Federal Circuit declined to conduct the trial in the first instance.

The bottom line is exceptional  does not mean “wrong” — otherwise every case would be exceptional.

There Must be at least Some “Causal Connection” Between the Misconduct and the Fee Award

In In re Rembrandt Technologies LP Patent Litigation, [2017-1784] (August 15, 2018), the Federal Circuit held that the district court did not abuse its discretion in deeming this case exceptional, but that the court erred by failing to analyze fully the connection between the fees awarded and Rembrandt’s misconduct, and vacated the district court’s fee award, and remanded for further proceedings.

Rembrandt asserted two patents that were revived improperly; allowed spoliation of evidence; improperly gave consultants an interest contingent on the litigation outcome; and threatened AOPs with a baseless injunction demand.  The district court determined that the case was “indeed exceptional” for three reasons. First, the court found that “the evidence shows that Rembrandt improperly compensated its fact witnesses, in violation of ethical rules of conduct.” Second, the court was “convinced that Rembrandt engaged in (or failed to prevent) widespread document spoliation over a number of years.”  Finally, the court found that “Rembrandt should have known that the ‘revived patents’ were unenforceable.”  The district court ultimately ordered Rembrandt to pay more than $51 million in fees to all Appellees.

On the exceptionality finding, The Federal Circuit said that Rembrandt raised strong arguments with respect to the district court’s factual findings. The Federal Circuit said that the district  court’s remarkably terse orders (four pages) shed little light on its justifications for its decisions on these fact-intensive issues. But abuse of discretion is a deferential standard. On the record before it, the Federal Circuit could not say that any of the district court’s findings was based “on an erroneous view of the law or on a clearly erroneous assessment of the evidence.”

On the issue of the amount of the award, Rembrandt raised no specific objections to Appellees’ tabulations of the hours they expended; nor did Rembrandt contend that
Appellees should have calculated fees using a lower hourly rate. Rembrandt instead argued that the fee award is excessive and unreasonable because the district
court failed to establish a causal connection between the claimed misconduct and the fees awarded, and the Federal Circuit agreed.  The district court did not explain why
an award of almost all fees was warranted or whether it had accepted appellee’s argument that the pervasive misconduct justified an award of all fees.  The district court, by and large, did not even attempt to assess which issues the claimed misconduct affected.

Even if Rembrandt’s misconduct, taken as a whole, rendered the case exceptional, the district court was required to establish at least some “causal connection” between the misconduct and the fee award.  What the district court did —award all fees with
no explanation whatsoever of such a causal connection—was not enough.  The Federal Circuit thus vacated the district court’s fee award and remanded for the district court to conduct the appropriate analysis in the first instance.

American Rule Defeats USPTO’s Claim for Attorneys’ Fees in §145 Actions

In Nantkwest, Inc. v. Iancu, [2016-1794] (July 27, 2018), the en banc Federal Circuit affirmed the district court decision that an award of “all expenses” pursuant to 35 U.S.C. §145 did not include the USPTO’s attorneys’ fees in its unsuccessful defense of the rejection of Nantkwest’s application.

35 USC §145 permits a disappointed patent applicant to challenge
the PTAB’s decision in district court. However, applicants who invoke §145 are required by statute to pay “[a]ll the expenses of the proceedings” incurred by the U.S. Patent and Trademark Office in defending the Board’s decision, regardless of the outcome. Historically, the PTO sought recovery of travel and printing expenses, and more recently  expert witnesses fees.  Most recently, the PTO has interpreted §145 as including its attorneys’ fees.

Calling the American Rule a “bedrock principle” of this country’s jurisprudence, the majority of the Federal Circuit held that the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a “specific and explicit” directive from Congress. Contrary to the panel decision that sided with the PTO, the Federal Circuit affirmed the district court judgement denying the PTO’s request for attorneys fees.


Invalidity Contentions Citing 32 Prior Art References with Only General Explanations, and “Inconsistent and Unilluminating” Claim Charts Not Enough to Put Patent Owner on Notice of the Weakness of its Position

In Stone Basket Innovations, LLC v. Cook Medical LLC, [2017-2330] (June 11, 2018), the Federal Circuit affirmed the denial of attorneys fees to defendant under 35 U.S.C. § 285 after plaintiff dismissed its complaint for infringement of U.S. Patent No. 6,551,327 on a basket-type stone extraction medical device used to remove stones from biological systems, when defendant instituted in inter partes review.

This appeal involved two main issues: whether the District Court erred in its assessment of: (1) the substantive strength of Stone’s litigating position, and (2) the alleged pattern of vexatious litigation by Stone.  On the first issue, the Federal Circuit held that the District Court did not abuse its discretion in finding that the substantive strength of Stone’s ultimately non-prevailing litigating position did not warrant an award of fees. The Federal Circuit held that the patent owner was not put on clear notice of the invalidity of its patent by defendants invalidity contentions listing 32 prior art references with general statements of invalidity, and “inconsistent and unilluminating” claim charts.  The Federal Circuit further noted that the invalidating prior art used in the inter partes review was listed on the face of the patent, creating a presumption of good faith in asserting its patent rights against Cook.  The Federal Circuit likewise found the statements of the inventor to be taken out of context, and in any even irrelevant because a post-issuance statement regarding a single element of a claimed invention does not establish invalidity.  Lastly, the Federal Circuit noted the district court’s explanation that following the service of the invalidity contentions, Cook took no action to ensure a rapid termination of the instant litigation.  Cook complained that the prevailing party’s conduct is not a proper consideration, but the Federal Circuit said it was a proper part of the totality of the circumstances.

The Federal Circuit added that Cook’s failure to provide early, focused, and supported notice of its belief that it was being subjected to exceptional litigation behavior further supports the District Court’s determination that Stone’s litigating position did not “stand out” from others.

The Federal Circuit concluded that absent any evidence that Stone’s litigating position was frivolous when filed or at any point before it filed for dismissal, it was not persuaded the District Court abused its discretion in determining Stone’s case did not meet the standard for an award of attorney fees.  The Federal Circuit said a party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its “parade of horribles” after all is said and done.”



It Costs $440,000 to Dismiss a Case for Lack of Standing, but Plaintiff Had to Pay it

In Raniere v. Microsoft Corp., [2017-1400, 2017-1401] (April 18, 2018), the Federal Circuit held that the district court did not err in finding that Microsoft and AT&T were the prevailing parties under 35 U.S.C. § 285  (2012), and did not abuse its discretion in awarding attorneys’ fees and costs.

Raniere sued for infringement of a total of five patents (U.S. Patent Nos. 6,373,936, 6,819,752, 7,215,752, 7,391,856, and 7,844,041), and Microsoft and AT&T challenged Raniere’s standing.  Rainiere and the other inventors assigned the underlying inventions to Global Technologies, Inc.  In May 1996, GTI was administratively dissolved.  In December 2014, Raniere executed a document on behalf of GTI, claiming to be its president and “sole owner,” that purportedly transferred the asserted patents from GTI to himself.

Microsoft challenged Raniere’s standing, and the district court ordered Raniere to produce documentation proving his representations. The district court found that the documents produced by Raniere failed to indicate that Raniere had an ownership interest in GTI at any time or that Raniere had the right to assign the patents at issue from GTI to himself.  Given Raniere’s failure to produce evidence to support his standing, the district court permitted Appellees to conduct limited discovery into the standing issue and stayed the cases pending its resolution.  The parties suspended discovery when they began negotiating terms of settlement, but Raniere refused
to finalize the settlement. AT&T then filed a motion for an order to show cause why the action should not be dismissed under Federal Rule of Civil Procedure 41(b) for
lack of standing.

The district court found that Raniere’s testimony surrounding the alleged transfer contradicted Raniere’s earlier representations and was “wholly incredible and untruthful. Moreover, the district court found that Raniere’s conduct demonstrated “a clear
history of delay and contumacious conduct.”  In a subsequent fees motion the district court award fees.  AT&T submitted evidence that it incurred $395,050.30 in attorney fees and $13,917.10 in costs, and Microsoft submitted evidence that it incurred
$176,166.40 in attorney fees and $2,073.68 in costs.  The district court found Appellees were not entitled to fees spent on certain matters after the district court issued its stay order. And, the district court reduced the lodestar for both Appellees by twenty percent due to duplication of efforts between Microsoft and AT&T attorneys. In view of these determinations, the district court awarded $300,295.71 to AT&T and $143,719.26 to Microsoft in attorney fees and costs.

The Federal Circuit agreed that the Appellees were the prevailing parties, and that the district court did not abuse its discretion finding the case exceptional and awarding fees. The Federal Circuit, noting that the district court was in a better position to determine whether a case is exceptional, had no reason to disturb the district court’s well-reasoned determination.  The Federal Circuit also concluded that the district court’s discretionary determination of fees and costs is well-supported and reflects the court’s careful consideration of the relevant billing rates, invoices, and records.


Alice Changed the Law; Patent Plaintiff Should have Reassessed its Claim

In Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., [2016-2442] (December 8, 2017), the Federal Circuit affirmed the district court’s award of fees on the grounds that following the Alice decision, patent owner’s claims were objectively without merit.

The district court awarded BBB its attorneys’ fees beginning from the date of the Alice decision, including fees incurred during the § 101 appeal. The district court determined that the case was exceptional
based solely on the weakness of IH’s post-Alice patent-eligibility arguments and the need to deter future “wasteful litigation” on similarly weak arguments.

The Federal Circuit, reviewing for abuse of discretion,  found that the district court acted within the scope of its discretion in finding the case to be exceptional based on the weakness of IH’s § 101 arguments and the need to deter similarly weak arguments in the future.  The Federal Circuit said that under Alice, the claims of the patent were manifestly
directed to an abstract idea, which the district court accurately described as “local processing of payments for remotely purchased goods.”  The
idea that a customer may pay for items ordered from a remote seller at a third-party’s local establishment is the type of fundamental business practice that, when implemented using generic computer technology, is not patent eligible under Alice. The Federal Circuit continued noting that under Alice’s second step, the only components disclosed
in the specification for implementing the asserted method claims are unambiguously described as “conventional.” These components do not supply an inventive concept.

The Federal Circuit held that Alice was a significant change in
the law as applied to the facts of this particular case, noting that prior to Alice, the state of the law for computer implemented business transaction inventions was less than clear.   While as a general matter
was and is sometimes difficult to analyze patent eligibility under the framework prescribed by the Supreme Court in Mayo, the Federal Circuit said there was no uncertainty or difficulty in applying the principles set out in Alice to reach the conclusion that the ’582 patent’s claims are ineligible. The Federal Circuit said that it was IH’s responsibility to reassess its case in view of new controlling law.

Because the district court did not abuse its discretion
in awarding attorney fees under § 285, the district court’s
decision was affirmed.

Federal Circuit to Rethink Whether an Applicant has to Pay the USPTO’s Lawyers

In Nantkwest, Inc. v. Matal, [2016-1794](August 31, 2017) the Federal Circuit sua sponte granted rehearing en banc of the panel decision discussed here on the issue of whether 35 U.S.C. § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the United States Patent and Trademark Office’s attorneys’ fees?

Not part of this review is its most unfair aspect — that a successful applicant still must pay the USPTO’s “expenses” (whatever that means).

Federal Circuit: The Second Circuit Would Agree with the Third, Fourth, Fifth, Sixth, and Ninth Circuits that Octane Fitness Applies to Lanham Act Claims

In Romag Fasteners, Inc. v. Fossil, Inc., [2016-1115, 2016-1116, 2016-1842] (August 9, 2017), the Federal Circuit vacated and remanded the district court’s award of attorneys fees to Romag under 35 U.S.C. § 285 but not under the identically worded 15 U.S.C. § 1117(a).

Romag has successfully sued defendants for infringement of U.S. Patent
No. 5,722,126 and U.S. Trademark Reg. No. 2,095,367.  Under the Patent Act and the Lanham Act, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285; 15 U.S.C. § 1117(a).

Applying the Octane standard, the district court found that Romag was entitled to attorney’s fees under § 285 of the Patent Act because Fossil did not “withdraw [anticipation and obviousness] defenses with prejudice until
after trial,” and because Fossil’s “patent invalidity defense of indefiniteness bordered on frivolous.”  With respect to the Lanham Act, the district court applied the prevailing Second Circuit precedent with respect to 15 U.S.C. § 1117(a) that “allows recovery of a reasonable attorney’s fee only on evidence of fraud or bad faith.”

Before Octane, the Second Circuit allowed recovery of attorney’s fees under 15 U.S.C. § 1117(a) only if there was bad faith or willful infringement on the part of the defendants.  However the Federal Circuit found that there is intervening relevant Supreme Court authority which, we think, would lead the Second Circuit to follow other circuits which have held that the Octane standard applies to the Lanham Act.

The Federal Circuit noted that since Octane was decided, the Third, Fourth, Fifth, Sixth, and Ninth Circuits have all held that Octane applies to Lanham Act Cases as well, and that no circuit has specifically considered Octane and then declined to apply it to the Lanham Act. Thus the Federal Circuit concluded that the Second Circuit would hold that, in light of Octane, the Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act.  Thus, the Federal Circuit vacated the denial of attorneys fees, and remanded the case.

On the issue of attorneys fees on the patent infringement claim, the Federal Circuit likewise vacated the award.  The Federal Circuit noted that a district court must consider the totality of circumstances, including the conduct of the prevailing party that is seeking attorney’s fees.  The Federal Circuit found that the district court erred in declining to consider, in connection with its totality of circumstances analysis, Romag’s earlier litigation misconduct. Romag’s misconduct cannot be disregarded on the theory that failure to award fees is equivalent to double-sanctioning Romag.  In fact the Federal Circuit said that the fact that Romag’s misconduct has already been sanctioned should be weighed more heavily, rather than be excluded, in the 35 U.S.C. § 285 analysis.

This Federal Circuit remanded the case to the district court to consider the Lanham Act and the Patent Act attorney’s fees and the claimed expert fees under the correct standard, free of the errors it identified.

The Sport of Kings: Federal Circuit Affirms $3.9 Million Fee Award for Two Week Trial on Patent Ownership

In AIA America, Inc. v. Avid Radiopharamaceuticals, [2016-2647] (August 10, 2017), the Federal Circuit affirmed the award of attorneys fees because (1) the Seventh Amendment right to a jury trial does not apply to
requests for attorney’s fees under § 285 of the Patent Act, (2) the district court did not err by making factual findings not foreclosed by the jury’s verdict on standing, and (3) AIA’s due process rights were not violated.

The Federal Circuit recounted an elaborate scheme perpetrated by plaintiff AIA and the purported sole inventor Mullan to appropriate for themselves inventions from Imperial College (Imperial) in London and the University of South Florida (USF).  The jury determined that USF did not knowingly and intentionally waive its ownership rights to the invention and that Hardy was a co-inventor. Based on the jury’s verdict, the district court found AIA lacked standing to assert the U.S. Patent Nos. 5,455,169 and 7,538,258, and entered judgment in favor of Avid.  Avid then sought attorneys fees for the case (in which in which twelve witnesses testified and over 200 exhibits were introduced) of $6,508,687.00, and was awarded of $3,943,317.70.

The most interesting aspect of the case is the Special Master’s Report which trimmed the attorneys fees ask from $6.5 to $3.9 million.  Highlights of which include:

  • Reducing by more than half non-attorney time of more than 900 hours at an average rate of $227/hour for docketing and updating case files.
  • Eliminating 300 hours of attorney time ($67,000) for collecting documents, which the Special Master found to be a clerical task.
  • Cutting in half the $35,000 charged by the firms Case Manager/Training Coordinator for communications with the litigation team
  • Cutting by 66% the $470,000 in attorney time for assisting with the preparation of documents.
  • Cutting by 2/3 the $730,000 for preparing three witnesses for their trial testimony, in view of what the Special Master thought was “piling on”
  • Cutting by 2/3 the $633,000 spent on a motion for summary judgement on which more than 12 attorneys billed time
  • Cutting in half the $308,000 spent on motions in limine
  • Cutting in half the $240,000 spent on preparing the pretrial memorandum and preparation for the pretrial hearing
  • Cutting the 654 hours spent preparing the Exhibit List and Witness list by $100,000
  • Cutting by 2/3 the $414,400.50 (846 hours) for preparing an expert witness who was not called at trial
  • Cutting by half the $1,098,654.50 billed for attendance at trial, finding that it difficult to understand the contribution of eight lawyers to the trial.
  • Cutting local counsels fees for merely attending the trial.

All in all, the Special Master reduced the fees requested by $2.9 million. This still resulted in the $3.9 million award affirmed by the Federal Circuit, proving once again that patent litigation is the sport of kings, and that if you have to ask “how much,” you probably can’t afford it.