In a decision Tuesday, the Federal Circuit vacated a district court's order denying a declaratory judgment plaintiff attorney fees, but including a scathing description of alleged spoliation by the patentee/DJ defendant.  The Federal Circuit held that the district court's decision was an improper advisory opinion, and therefore vacated with instructions to dismiss.

The patentee, before bringing suit against several defendants, shredded over two million documents on what it called "shred day."   In an effort to avoid having a formal court opinion holding it had engaged in spoliation, the patentee offered to pay the DJ plaintiff's full attorneys' fees in the litigation, and provided an offer of judgment under Rule 68.  The plaintiff declined, and ultimately the court did not award attorney fees, but issued the spoliation order anyway.  On appeal, the Federal Circuit held that when a party essentially "throws in the towel," there is nothing left for the court to decide and therefore no jurisdiction exists.  In this case, the Federal Circuit determined that as soon as attorneys' fees were offered by a party, the case became moot and the trial court lacked any further jurisdiction to hear it or determine issues.  As a result, the order regarding spoliation was vacated.

More on Samsung Elecs. Co. v. Rambus, Inc. after the jump.

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In a decision Tuesday, the Federal Circuit affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant's customers that the defendant's product potentially infringed the plaintiff's patent.  The patent at issue had a lengthy and complicated prosecution history that included an interference proceeding.  In that proceeding, the BPAI ruled another party properly had priority in the invention.  The patentee filed an action pursuant to § 146, and the parties eventually settled, with the party that prevailed at the BPAI conceding priority and receiving a license under the patent.  In another proceeding in which the patentee was not a party, a district court held that the patentee had abandoned, suppressed, or concealed his invention.

The defendant argued that because of the issues relating to priority and abandonment, suppression, and concealment (as well as inequitable conduct issues), the plaintiff's assertions of infringement were in bad faith, and sought an injunction to prevent the plaintiff from representing to the defendant's customers that its products potentially infringed.  The district court rejected this, finding the four-factor test did not warrant an injunction.

The Federal Circuit affirmed, finding the action not objectively unreasonable, as the case was not so clear-cut to make the district court's decision an abuse of discretion.  However, while the court noted the defendant's chances on appeal were "slim," the appeal was not "clearly hopeless," and declined to award the plaintiff its fees for the appeal.

More detail of Judkins v. HT Window Fashion Corp. after the jump.

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In a decision last week, the Sixth Circuit affirmed an award of partial attorney fees to a defendant in a copyright case.  The plaintiff sued multiple defendants, alleging copyright infringement under numerous theories.  One such theory was that receipt of royalties from the sale of infringing music rendered a party liable for the underlying infringement.  This theory was rejected by the court when it granted summary judgment in favor of some of the defendants.  Even though it had been rejected, the plaintiff continued to pursue the theory in this case against the remaining defendant.  When the last defendant prevailed on summary judgment, the district court awarded the defendant its attorney fees incurred after the first summary judgment decision.  

In a previous appeal, the Sixth Circuit vacated the award, noting that the theory of recovery did not become objectively unreasonable by virtue of the decision regarding the other defendants' summary judgment motion, and remanded the issue for redetermination in light of additional factors.  On remand, the district court awarded the same amount, noting the plaintiff's overly aggressive litigation tactics.  Such tactics included needlessly requiring the defendant to prepare for an unnecessary trial (rather than stipulating to the same decision regarding the "royalty receipt" theory of recovery and addressing the issue on appeal), filing a single complaint over 900 pages long with hundreds of separate claims and defendants, engaging in discovery abuses, abusing the summary judgment process by submitting massive statements of disputed facts which included legal conclusions and immaterial and argumentative assertions, and engaging in sharp pre-trial practices.  The court also sought to deter the plaintiff from similar litigation tactics, given the plaintiff's pattern of litigation.

The Sixth Circuit affirmed.  The court noted that while the "royalty receipt" theory of liability had been rejected by the court, it was not objectively unreasonable.  However, the district court's assessment of the various factors was not an abuse of discretion, and the court therefore affirmed the award.

More detail of Bridgeport Music, Inc. v. WB Music Corp. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's claim construction and its concomitant grant of summary judgment of noninfringement, as well as its denial of attorney fees under § 285.  The district court held the patentee had, during prosecution of the patent at issue, made a clear and unmistakable disavowal of claim scope, and as a result, under the doctrine of prosecution disclaimer, the accused devices could not fall within the scope of the claims.  The district court also held that the case was not exceptional, and therefore attorney fees were not warranted.

The Federal Circuit agreed with the district court, finding application of prosecution disclaimer appropriate, affirming the summary judgment of noninfringement.  The court further agreed that the case was not exceptional, and therefore affirmed the denial of attorney fees to the defendants.

More detail of Computer Docking Station Corp. v. Dell, Inc. after the jump.

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In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award.  Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia.  Even though the products were not sold in the United States, under the Fifth Circuit's decision in American Rice, Inc. v. Arkansas Rice Growers Cooperative Association, enforcement of trademark rights extraterritorially was permitted if it was not an affront to Saudi sovereignty.  Here, there was no such evidence of record (such as a finding by a Saudi court that there was no infringement), so the court determined that jurisdiction was properly exercised.

The court also vacated the district court's award of attorney's fees on the basis that it represented an inconsistent award.  The district court awarded profits, but no attorney fees under the Lanham Act, and attorney's fees, but no other damages under a breach of contract theory.  Because an award of both attorney fees and profits would mean portions of the award would come from different legal theories under Texas law, the court did not permit recovery of both.

More detail of Am. Rice, Inc. v. Producers Rice Mill, Inc. after the jump.

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In a decision yesterday, the Seventh Circuit clarified what is required for a party to be considered a "prevailing party" in a copyright case, and therefore be eligible for an award of attorneys' fees under § 505.  In this case, the plaintiff asked for a voluntary dismissal without prejudice under Rule 41(a)(2), as the case had been pending for over a year.  The district court dismissed the case with prejudice, but held that the dismissal did not make the defendant a prevailing party, and therefore declined to award fees under § 505.

The Seventh Circuit reversed, holding that because the dismissal with prejudice was a favorable judgment that materially altered the legal relationship of the parties.  As a result, the district court should have considered whether fees were appropriate.  The court took the next step also, and found that an award of fees was appropriate in this case, given the facts and the relationship between the parties, and remanded with instructions to award appropriate fees for both the original case and the appeal.

More detail of Riviera Distribs., Inc. v. Jones after the jump.

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In a decision yesterday, the Federal Circuit once again affirmed a finding of infringement against a farmer who saved seeds covered by a patent to replant the following year.  The plaintiff in this case, Monsanto, has brought similar cases in the past, and they have resulted in similar outcomes.

Here, the asserted claims covered the genetic sequence for Monsanto's Roundup Ready gene, which, when incorporated into plants, causes the plants to exhibit tolerance to the herbicide glyphosate.  The defendant farmer argued that because the claims were directed to the sequence rather than the seeds or plants incorporating the sequence, the seeds were not covered by the patent.  

This argument was flatly rejected by the Federal Circuit.  The court noted that the authority on which the defendant relied, J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., actually leads to the opposite result, as in that case the Supreme Court held that despite the availability of plant patents and PVPA certificates, utility patents were also available for plants, assuming the requirements for patentability were met.  In fact, the Court refused "to narrow the reach of § 101 where Congress has given us no indication that it intends this result."  Here, the infringing act was the use of the gene by planting the seed incorporating the gene, so the Federal Circuit affirmed the finding of infringement.  While the court vacated a portion of the damages award for recalculation, it affirmed the award of costs and attorney fees to Monsanto.

More detail of Monsanto Co. v. David after the jump.

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In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation. 

In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant.  The plaintiff asked for and was awarded damages to compensate for the amount the defendant would have had to pay the plaintiff for a "market entry fee."  As a result, the court reasoned the plaintiff could not assert that it would be irreparably harmed by future sales by the defendant, having already been compensated for the harm caused by the defendant's entry to the market.  The court therefore instructed the district court on remand to determine the amount of royalty due on the defendant's compulsory license under the patent going forward.

The court briefly mentioned the issue of willful infringement after In re Seagate Technology, LLC, but only noted that there was no evidence of objective recklessness by the defendant and therefore the finding of no willful infringement was appropriate.  The court also gave a reminder to parties and lawyers of the potential consequences when being too cavalier toward obligations under the Federal Rules of Civil Procedure.  As explained in the court's footnote 4:

This case aptly demonstrates the pitfalls of playing fast and loose with rules of discovery. Conclusory expert reports, eleventh hour disclosures, and attempts to proffer expert testimony without compliance with Rule 26 violate both the rules and principles of discovery, and the obligations lawyers have to the court. Exclusion and forfeiture are appropriate consequences to avoid repeated occurrences of such manipulation of the litigation process.

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On Friday, the Fifth Circuit affirmed a district court finding denying an award of attorney's fees to a defendant who had been sued for copyright infringement by several recording companies, as part of the industry's ongoing litigation efforts to curb file sharing.  In doing so, the court upheld the notion that, although attorney's fees are awarded routinely to prevailing parties in copyright actions under 17 U.S.C. § 505, recovery of attorney's fees is not automatic and must be reviewed in light of several non-exclusive factors.  

More detail of Virgin Records Am. Inc. v. Thompson after the jump.

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In a decision Tuesday, the Ninth Circuit reversed a district court's decision awarding $100,000 in attorney's fees for trademark counterfeiting under 15 U.S.C. § 1117(c).  The court reached this decision based on the language of § 1117:  While § 1117(b), the provision allowing attorney's fees, states that they shall be awarded when damages are assessed under § 1117(a), the subsection regarding actual damages, it makes no reference to § 1117(c), the statutory damages provision.  Based on this statutory text, the Ninth Circuit held that when a plaintiff opts for statutory damages, the language of § 1117, when read as a whole, does not permit an award of attorney fees based on § 1117(b).

More detail of K & N Eng'g, Inc. v. Bulat after the jump,

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