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Munchkin Is Luv-n This Win

Reversing an award of attorney’s fees, the US Court of Appeals for the Federal Circuit found that a district court abused its discretion in making an exceptional-case determination where patent and trademark infringement claims were reasonable. Munchkin, Inc. v. Luv N-Care, LTD., Admar International, Inc., Case No. 19-1454 (Fed. Cir. June 8, 2020) (Chen, J.). Munchkin sued LNC for trademark infringement, unfair competition, trade dress infringement and patent infringement based on LNC’s no-spill drinking cups. LNC filed a petition for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB). While the IPR was pending, Munchkin voluntarily dismissed all of its non-patent claims with prejudice. The PTAB subsequently found Munchkin’s patent was unpatentable. After the PTAB’s finding, Munchkin dismissed its patent infringement claim. LNC filed a motion for attorney’s fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a), arguing that the trademark and...

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Fee Shifting Under § 285 Does Not Apply to Conduct Solely Arising in IPR

Considering for the first time whether fee shifting of § 285 applies to exceptional conduct arising solely from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit held that § 285 does not authorize an award of fees based on conduct at the United States Patent and Trademark Office (USPTO) during the course of an IPR proceeding. Amneal Pharma. LLC v. Almirall, LLC, Case No. 2020-1106 (Fed. Cir. June 4, 2020) (Dyk, J.). Almirall owns certain Orange Book-listed patent rights to medication used to treat acne. Its competitor, Amneal, planned to market a generic version of the acne medication. Before seeking approval to do so, Amneal filed an IPR petition challenging the validity of certain claims of Almirall’s patents. Amneal then filed an Abbreviated New Drug Application (ANDA), identifying Almirall’s patents in the Paragraph IV certification. Almirall subsequently filed a district court action against Amneal for infringement....

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Prayer for Declaratory Relief Invokes Copyright Act and Available Attorneys’ Fees

Vacating the district court’s order denying a defendant’s recovery of attorneys’ fees under the Copyright Act, the US Court of Appeals for the Ninth Circuit held that, even when asserted as a claim for declaratory relief, any action that turns on the existence and potential infringement of a valid copyright invokes the Copyright Act and therefore gives the district court discretion to award reasonable attorneys’ fees pursuant to § 505 of the Copyright Act. Doc’s Dream, LLC v. Dolores Press, Inc. and Melissa Scott, Case No. 18-56073 (9th Cir. May 6, 2020) (Callahan, J.). In a long-running and multi-action dispute between Doc’s Dream and Dolores Press over the ownership rights and usage of video-recorded sermons created by the late religious leader Dr. Eugene Scott, the Ninth Circuit affirmed a district court grant of summary judgment in favor of Dolores in response to Doc’s Dream’s petition for a declaratory judgment on grounds that Dr. Scott abandoned his...

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Bad Conduct During Litigation Means Attorneys’ Fees Against the Government, Regardless of Damage Amount

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). Hitkansut had a patent application pending when it entered into a nondisclosure agreement with Oak Ridge National Laboratory (ORNL). Hitkansut provided ORNL with a copy of the then-unpublished patent application. ORNL used the patent application, without authorization, to prepare various research reports and publications and to receive funding and awards. Following issuance of the patent, Hitkansut sued the United States (acting through ORNL) under 28 USC § 1498. The Claims Court determined that certain claims of the patent were valid and infringed by the government. Although Hitkansut sought a royalty in the amount of approximately $5...

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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.). Dragon sued DISH, Sirius and others for patent infringement. DISH responded by filing an IPR petition attacking the validity of the patent. The district court stayed the proceedings as to DISH and Sirius, who joined the IPR, but proceeded with claim construction as to the other defendants. Following claim construction, the district court entered a judgment of noninfringement as to all defendants. The Patent Trial and...

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Defendant Not “Prevailing Party” for Purposes of Attorneys’ Fees After Voluntary Dismissal Without Prejudice

The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees under § 285, finding that a defendant is not a “prevailing party” for purposes of collecting attorneys’ fees where the plaintiff voluntarily dismissed its case without prejudice and there was no final court decision designating either litigant as the prevailing party. O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC, Case No. 19-1134 (Fed. Cir. Apr. 13, 2020) (Hughes, J.). Mossberg sued Timney for patent infringement following the breakdown of licensing negotiations. Timney sought reexamination of the patent and was granted a stay of the district court proceedings pending the reexamination outcome. After the patent was invalidated during reexamination, Mossberg filed a notice of voluntary dismissal under Rule 41(a)(1)(A)(i), which permits voluntary dismissal by a plaintiff without court order. The district court subsequently entered an order stating...

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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. In September 2008, Aleksey Silenko formed Party Bus MN LLC and registered the domain name A month later, Silenko changed the name of the company to Safeway Transit LLC and registered the domain name From 2008 to 2015, Safeway displayed decals reading “Rent My Party Bus,” “952 Limo Bus” and...

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Voluntary Dismissal Does Not Preclude Attorney’s Fees under Rule 54(d)

The US Court of Appeals for the Federal Circuit vacated a district court’s denial of attorney’s fees, finding that voluntary dismissal with prejudice constituted a final judgment for the purposes of FRCP Rule 54(d) under Ninth Circuit law. Keith Mfg., Co. v. Butterfield, Case No. 19-1136 (Fed. Cir. Apr. 7, 2020) (Hughes, J.). In 2015, Keith Mfg., a company specializing in loading and unloading trailers, sued a former employee, Mr. Butterfield, in district court. The lawsuit accused Butterfield of patent infringement and alleged that he had improperly obtained a patent application based on inventions made during his employment. Butterfield’s patent covered a device for unloading trailers. Butterfield sent Keith Mfg. a covenant not to sue on the patent and then filed a motion to dismiss all but the correction of inventorship claims. The district court dismissed the declaratory judgment claims but allowed the state court claims to proceed. In 2017, the parties...

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Ninth Circuit Gleefully Rejects Copyright Claims against California High School

Affirming a district court’s summary judgment in favor of various defendants, including the vocal music director and parent volunteers at Burbank High School (whose competitive show choirs reportedly inspired the television series “Glee”), the US Court of Appeals for the Ninth Circuit examined issues of standing via copyright ownership and the copyright infringement defense of fair use. The Court, however, reversed the lower court’s denial of defendants’ attorneys’ fees and remanded for the calculation of an appropriate award in view of plaintiff’s “objectively unreasonable” arguments in the lawsuit. Tresóna Multimedia, LLC, v. Burbank High School Vocal Music Association, et. al., Case No. 17-56006 (9th Cir., Mar. 24, 2020) (Wardlaw, J.). Arizona-based licensing company Tresóna Multimedia, LLC, filed copyright infringement claims against the Burbank High School music director, as well as the school’s booster club and others, citing infringing performances by...

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