The US Court of Appeals for the Federal Circuit affirmed the US Court of Federal Claims attorneys’ fees award for patent infringement by the United States solely based on its actions during litigation. Hitkansut LLC, Acceledyne Technologies, LTD, LLC v. United States, Case No. 19-1884 (Fed. Cir. May 1, 2020) (Prost, CJ).
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Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees
Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the accused infringer is considered the “prevailing party” for purposes of 35 U.S.C. § 285, but remanded for consideration on whether fees incurred in IPR proceedings can be awarded. Dragon Intellectual Property, LLC v. DISH Network LLC, et al., Case No. 19-1283 (Fed. Cir. Apr. 22, 2020) (Moore, J.).
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No Disgorgement When Injunction is Sufficient Remedy
Addressing issues related to the disgorgement of profits and attorneys’ fees in a trademark infringement lawsuit, the US Court of Appeals for the Eighth Circuit affirmed a denial of such fees and profits. Safeway Transit LLC and Aleksey Silenko v. Discount Party Bus, Inc., Party Bus MN LLC, and Adam Fernandez, Case No. 18-2990 (8th Cir. Apr. 6, 2020) (Smith, J.).
In 2000, Alex Fernandez started Party Bus MN, which was the first party-bus company in the Twin Cities region. In 2004, Fernandez formed Discount Party Bus Co., LLC (DPB). Fernandez also used the names “Rent My Party Bus” and “952 Limo Bus” in print advertising before 2008.
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Nefarious Motives Could Mean No Declaratory Judgment for You
The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to dismiss a first-filed declaratory judgment complaint, finding that equitable considerations warranted departure from the first-to-file rule. Communications Test Design, Inc. v. Contec, LLC, Case No. 19-1672 (Fed. Cir. Mar. 13, 2020) (O’Malley, J.).
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Failure to Mark Can Put Damages Underwater
The US Court of Appeals for the Federal Circuit affirmed that patented articles must be marked in order for the patentee to recover pre-notification or pre-complaint damages. Arctic Cat Inc. v. Bombardier Recreational Products Inc., Case No. 19-1080 (Fed. Cir. Feb. 19, 2020) (Lourie, J).
In 2002, Arctic Cat entered into a licensing agreement with Honda for patents related to personal watercraft. The license agreement contained no provisions requiring Honda, as a licensee, to mark all licensed products with the applicable patent numbers. Honda began selling unmarked watercraft, and Arctic Cat made no attempt to ensure that the products were marked. Approximately a decade later, Honda stopped selling the unmarked products.
2019 IP Law Year in Review: Copyrights
Executive Summary
In many ways, copyright jurisprudence in 2019 was a study in contrasts. While certain cases represented a “back to basics” approach, answering fundamental questions such as “When can a copyright owner sue for copyright infringement?” and “What costs can a prevailing copyright owner recover?,” others addressed thorny issues involving fair use and the first sale doctrine.
In the wake of several pivotal copyright decisions involving the music industry in 2018, such as the watershed “Blurred Lines” verdict, disputes involving music continued to provide fuel for the courts to weigh in on copyright this year. As we look to 2020, all eyes will be on the Supreme Court and its decision in the epic battle between Google and Oracle and the protectability of software. This report provides a summary of 2019’s important copyright decisions with the hopes of assisting those navigating copyright infringement and enforcement issues in the coming year.
Federal Circuit Confirms – Blackbird Not Fit to Litigate
The US Court of Appeals for the Federal Circuit affirmed a district court’s award of attorneys’ fees and expenses to deter serial patent filers’ future “abusive litigation.” Blackbird Tech LLC, DBA Blackbird Technologies v. Health in Motion LLC, DBA Inspire Fitness, Leisure Fitness Equipment LLC, Case No. 18-2393 (Fed. Cir. Dec. 16, 2019) (Wallach, J.).
Blackbird sued Health in Motion and Leisure Fitness (HIM) for infringing a patent directed to exercise equipment that includes a housing with a structural surface defining an arcuate path and multiple pairs of pulleys positioned along the arcuate path. Shortly after filing the case, Blackbird offered to settle for $80,000. HIM rejected the offer, stating that they believed that Blackbird would be ordered to pay their attorneys’ fees, and countered with a settlement offer that included Blackbird paying HIM $120,000. Over the course of the next year, Blackbird continued to negotiate until it eventually offered HIM a license to the patent for zero dollars. HIM declined.
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Data Processing Software Checks Out as Patent Eligible
PATENTS / SUBJECT MATTER ELIGIBILITY / ABSTRACT IDEA
Addressing an issue of software subject matter eligibility, the US Court of Appeals for the Federal Circuit reversed the district court’s judgment on the pleadings under 35 USC § 101, finding claims related to error checking patent eligible. Koninklijke KPN N.V. v. Gemalto M2M GMBH et al., Case Nos. 18-1862, -1864, -1865 (Fed. Cir. Nov. 15, 2019) (Chen, J).
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