Enhanced Patent Damages / Attorney Fees

35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims. It was important in this case that infringement of the various system and method claims have different requirements to qualify for pre-suit damages. Pre-suit damages for the system claims are controlled by the marking requirements of 35 U.S.C. § 287(a), whereas pre-suit damages for the method claims are not. With respect to the method claims of the ‘725 and ‘751 patents, Packet Intelligence argued that evidence of direct infringement of the ‘725 and ‘751 patents was sufficient to merit an award of damages for pre-suit activities. Direct infringement would require the method of the patent claims to actually be practiced, i.e., the steps of method actually performed. However, NetScout’s primary activity was to sell and license software, and, as the Federal Circuit pointed out, method claims… Read More »35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

Willful Infringement Allegations Require More Than Conclusory Statements

In a recent decision from the United States District Court for the District of Nevada, the court granted a motion to dismiss willful infringement allegations for lacking plausible factual allegations. IP Power v. Westfield , No. 2:19-cv-01878-MMD-NJK (D. Nev. June 4, 2020). This case centers around U.S. Patent No. 6,817,671, which is directed to a collapsible, reclining camp chair with a footrest and cupholders.  The plaintiff sued the defendant after multiple correspondences were exchanged between the parties.  In its complaint alleging patent infringement, the plaintiff also asserted that the defendant engaged in conduct rising to the level of willful infringement.  The defendant filed a motion to dismiss the willful infringement allegations, and the defendant’s argument centered on a single paragraph in the complaint.  That paragraph recited that: In addition, it is believed that [defendant] knew of the 671 Patent and/or licensed products before [defendant] developed its Accused Instrumentalities and copied the patented features from the 671 Patent and/or licensed patented products into the Accused Instrumentalities. Furthermore, [defendant] had actual or constructive knowledge of the 671 Patent and its infringement prior to the filing of this Complaint. At least as of March 22, 2019, [plaintiff] informed [defendant] that [defendant]’s Reclining Camp… Read More »Willful Infringement Allegations Require More Than Conclusory Statements

No Attorney Fees for § 101 Dismissal: Data Scape Ltd. v. Spotify USA Inc.

Despite a refiled case and a subsequent dismissal for ineligible subject matter, plaintiff Data Scape escaped paying attorney fees to defendant Spotify in a recent decision from the Central District of California.  Data Scape Limited v. Spotify USA Inc. et al., No. CV 19-4367 PSG (SKx) (C.D. Cal. Dec. 3, 2019). Data Scape is apparently a patent assertion entity, and Spotify is a well-known music streaming service. Spotify successfully convinced the district court to dismiss Data Scape’s claim for patent infringement, and then Spotify filed a motion for sanctions, the subject of this decision. Because Spotify’s motion is based on Data Scape’s litigation conduct, the timeline of events is important. The dispute began with Data Scape filing an earlier suit for infringement of U.S. Patent Nos. 9,712,614; 9,380,112; 7,720,929; and 7,617,537, all in the same family. Spotify moved to dismiss the suit under § 101 for ineligible subject matter. Instead of filing a response, Data Scape filed an amended complaint. Spotify followed up with another motion to dismiss on much the same grounds. Three days before a response was due, a different judge in the same district dismissed a case filed by Data Scape against a different defendant, Western Digital,… Read More »No Attorney Fees for § 101 Dismissal: Data Scape Ltd. v. Spotify USA Inc.

Attorney Fees for Suing on Patent that “Looks Like Alice”

After dismissing a lawsuit alleging infringement of US Patent No. 9,569,755 (“Financial Management System”), Delaware’s Judge Richard Andrews has awarded attorney fees under Octane Fitness and 35 U.S.C. § 285, finding an exceptional case because claims of the ’755 patent were so clearly ineligible under 35 U.S.C. § 101 and the Mayo/Alice abstract idea test. Finnavations LLC v. Payoneer, Inc., Civil Action No. 1: 18-cv-00444-RGA and 1: 18-cv-00445-RGA (Mar. 18, 2019). Judge Andrews acknowledged that “the law of patent eligibility has perhaps become unpredictable and unclear on the fringes,” but stated that he had “rarely been more confident in the patent ineligibility of a set of claims or more confident in the unreasonableness of a Plaintiff’s decision to sue on a patent.” Here is one of the claims that prompted these comments: 1. A method for transferring payment information to a personal financial management program comprising invoking a financial assistant operating on a network device upon a determination of a transmission of transaction data to a commercial web server configured to conduct online financial transactions intercepting, by the financial assistant on the network device, the transaction data in a first data structure comprising a plurality of components of transaction data,… Read More »Attorney Fees for Suing on Patent that “Looks Like Alice”

Attorney Fees Awarded for Post-Alice Patent Litigation

The Federal Circuit has affirmed an award of attorney fees under 35 USC § 285 against a patent owner that pursued its case alleging infringement of a business method patent after the US Supreme Court decided Alice Corp. v. CLS Bank Int’l. in June 2014. Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 2016-2442 ( Fed. Cir. Dec. 8 2017) (opinion by Judge Chen, joined by Judges Wallach and Stoll; precedential). Claims of US Patent No. 6,381,582 recite methods for processing payments for the sale of goods. The court agreed that, “following the Alice decision, [the patent owner’s] claims were objectively without merit.” A fee award was therefore justified. The District Court had granted the defendant’s motion for judgment on the pleadings based on patent-ineligibility under 35 USC § 101 in August 2015; and the Federal Circuit affirmed this decision in April 2016. Once that appeal was complete, the District Court ruled on the defendant’s pending motion for an award of fees under Section 285, agreeing that the patent owner’s continuation of its case after Alice made the case “exceptional” under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). The Federal Circuit… Read More »Attorney Fees Awarded for Post-Alice Patent Litigation

Alice Dismissal No Basis for Exceptional Case, Attorney Fees

Having brought a lawsuit for a patent who claims are found invalid under 35 U.S.C. § 101, and an Alice dismissal, is the plaintiff’s conduct “objectively baseless” justifying an award of attorney fees under 35 U.S.C. § 285?  Given the unpredictability of how a court will rule on the question of patent-ineligibility, it is unsurprising that, especially in a close case, a court would decline to find an “exceptional case,” which is exactly what the court did in SungKyunKwan University v. LMI Technologies USA Inc., No. 3-16-cv-06966 (N.D. Cal., July 19, 2017). The court had granted a motion to dismiss after a finding of patent-ineligibility of claims of U.S. Patent No. 7,957,639B2 (“Method and system for determining optimal exposure of structured light based 3D camera”). Looking at the only independent claim of the ’639 patent in light of the murky patent-eligibility caselaw, one can see how the plaintiff might have though it could prevail on an argument that the claim was directed to patent-eligible technology. Claim 1 recites: A method for determining an optimal exposure of a structured light based three dimensional (3D) camera system including a projecting means for illuminating a predetermined pattern on a target object, an image… Read More »Alice Dismissal No Basis for Exceptional Case, Attorney Fees

Patent Plaintiff Losing on Alice Isn’t an Exceptional Case

There was no exceptional case under 35 U.S.C. § 285 where a plaintiff filed and prosecuted a complaint alleging infringement of a patent whose claims were held invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101.  Telinit Technologies, LLC v. Alteva, Inc., No. 2:14-CV-369 (E.D. Texas, March 3, 2017).  After a claim construction, the court had granted a defendant’s motion for judgment on the pleadings of U.S. Patent Number 6,192,123.  The defendant then sought attorneys’ fees under Section 285. The defendant, Jive, contended that the case was exceptional because the defendant was a non-practicing entity, had produced fewer documents than the defendants, and “settled with every company against whom it had asserted the ’123 Patent other than Jive.”  Jive also argued that its success in “overcome[ing] the presumption of presumption of validity by clear and convincing evidence” showed that the case was exceptional. But the case was filed before Alice Corp. Pty. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014).  The case was not exceptional under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014).: Jive’s only evidence in support of its claim that Telinit’s litigating position lacked strength… Read More »Patent Plaintiff Losing on Alice Isn’t an Exceptional Case

No Attorney Fees after Dismissal for Lack of Patent-Eligibility

Until the law defining patentable subject matter under § 101 gains clarity, don’t expect attorney fees for cases dismissed under § 101.  And if a court denies your motion before the opposing party even responds, that’s a sign you may have pushed too far. In West View Research v. BMW, No. 14-CV-2670-CAB (WVG) (S.D. Cal. Jan. 17, 2017), the court did just that, denying BMW’s request for attorney fees under 35 U.S.C § 285 after dismissing West View’s case for unpatentable subject matter under 35 U.S.C. § 101. In an earlier order, the court granted BMW’s motion to dismiss the case because the patents were directed to an unpatentable abstract idea. West View had asserted two patents, U.S. Patent Nos. 8,301,456 and 8,311,834. The patents covered providing information between an elevator or other “personnel transport device” and a user’s mobile device. The court found that the claims were directed to the abstract idea of “identifying an authorized user and providing information to that user” and were therefore invalid under § 101. Fresh off that victory, BMW asked for attorney fees under 35 U.S.C. § 285, which gives discretion to the court to award fees for “exceptional” cases. The court disagreed that… Read More »No Attorney Fees after Dismissal for Lack of Patent-Eligibility

No Fee Award Against Plaintiff Who Asserted Patents Invalidated Under Alice

A district court has roundly rejected a request for an award of attorney fees against a plaintiff who asserted business method patents later found invalid under 35 U.S.C. § 101 and Alice Corp v. CLS Bank.  O2 Media LLC v. Narrative Science Inc., No. 15-CV-05129 (N.D. Ill. Jan 3, 2017). After succeeding with a Rule 12(b)(6) Motion to Dismiss, the defendant sought fees as the prevailing party under 35 U.S.C. § 285, arguing that this was an “exceptional case.”  It was not, said the court: the patents may have been invalid, but “Alice did not require the plaintiff to give up any hope of enforcing patents previously granted by the Patent Office pursuant to its standard procedures.” First, the court rejected the argument that fees were warranted based on the defendant’s argument that the plaintiff had not conducted an adequate pre-suit investigation.  The court never reached the issue of infringement, and therefore never developed a record to support findings to award fees based on what the plaintiff allegedly knew about the defendant’s accused system. Likewise, the plaintiff’s request for $1.25 million in licensing fees “does not mean that it was attempting to troll for settlements or otherwise improperly extract value… Read More »No Fee Award Against Plaintiff Who Asserted Patents Invalidated Under Alice

Complaint Alleging Business Methods Patent Infringement Results in Exceptional Case Finding and Fee Award

After granting a Rule 12 motion for judgment on the pleadings of invalidity of US Patent No. 6,381,582, and after the Federal Circuit affirmed that judgment without comment, a Delaware District Court found an exceptional case under 35 U.S.C. § 285 and ordered the plaintiff to pay the defendant’s fees and costs.  Inventor Holdings, LLC v.  Bed Bath & Beyond Inc., No. 14-448-GMS (D. Del. May 31, 2016). The plaintiff had filed its lawsuit two months before the Supreme Court’s June 19, 2014, decision in Alice Corp. Pty. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014).  Over a year after Alice, on August 21, 2015, the court found that the claims of the ’582 patent solved “business problems,” and granted the defendant’s motion to dismiss for invalidity.  In particular, the court had found that the patent addressed the problems of providing additional payment options for remote customer orders, and “processing those payments without having to provide credit card information over the Internet, phone, or mail.”  The court found that “retailers have long sought to provide their customers with convenient, flexible payment options and to protect their customers’ financial information,” and that the claimed invention was an abstract idea because… Read More »Complaint Alleging Business Methods Patent Infringement Results in Exceptional Case Finding and Fee Award