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Category: Attorney fees and exceptional cases


Resolving Circuit Splits: Supreme Court Addresses Issues Regarding Legal Fees
March 07, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-Sowatzke On March 4, 2019, the United States Supreme Court granted certiorari in Iancu v. NantKwest, Inc. to settle the debate over what “all the expenses” means under the U.S. Patent and Trademark Office’s (USPTO) win-or-lose attorney fee policy. This controversial policy involves seeking attorneys’ fees from applicants, regardless of the outcome of a case. During patent prosecution, if met wi.......
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Attorneys' Fees included under "All the Expenses"
June 27, 2017
Post by Blog Staff
On June 23, 2017, the Federal Circuit released a decision allowing the USPTO to recover attorneys’ fees under 35 U.S.C. § 145. According to § 145:                   “[a]n applicant dissatisfied with the decision of the [PTAB] . . . may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have r.......
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Attorneys Granted Motion for Increased Fees in "Happy Birthday" Copyright Suit
August 28, 2016
Post by Blog Staff
Recently a California U.S. District Judge found that Warner/Chappell Music, Inc. did not hold a valid copyright on the song "Happy Birthday To You‚¬, and the song was held to be in the public domain. As part of the judgment, Warner/Chappell Music, Inc. was ordered to pay $14 million to reimburse members of the class action law suit ho had previously paid to use the song "Happy Birthday To You‚¬. .......
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Supreme Court Issues Decision on Treble Damages
June 13, 2016
Post by Blog Staff
On the subject of willful infringement, 35 U.S.C. § 284 provides that, "[T]he court may increase the damages up to three times the amount found or assessed.‚¬ On its face, the statute allows for broad discretion by the district courts, but the Federal Circuit set out a stricter standard for awarding of enhanced damages, as In re Seagate Technology LLC. This test required clear and c.......
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Supreme Court Revisits Standard for Awarding Attorneys' Fees in Copyright Cases
April 28, 2016
Post by Brandon W. Clark
Brandon W. Clark Earlier this week the Supreme Court heard oral arguments addressing the relevant standard for awarding attorneys' fees in cases involving copyright law. The Court's ruling, expected later this spring, will likely have a significant impact on copyright litigation cases. Section 505 of the Copyright Act provides that a district court "may"award a reasonable attorney's fee to a "prevai.......
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Supreme Court to Review Willful Infringement Standard in Light of Octane Fitness
October 21, 2015
Post by Blog Staff
Paul S. Mazzola In the 2014 case of Octane Fitness v. ICON Health & Fitness, the Supreme Court overruled Federal Circuit jurisprudence and provided a flexible framework for district courts to grant attorney's fees in "exceptional cases"under 35 U.S.C. § 285. The Court reasoned that requiring a prevailing party to show "material inappropriate conduct"or that a case was both "object.......
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Octane Fitness in Practice: Federal Circuit Applies Supreme Court Attorney Fees Standard
July 14, 2015
Post by Blog Staff
The Supreme Court decision in Octane Fitness LLC v. ICON Health and Fitness (previously discussed on Filewrapper®) changed the standard for awarding attorney fees in patent suits to the prevailing party in exceptional cases under Section 258 of the patent statute. In Octane Fitness, the Court further defined "exceptional cases"to mean those "that stands out from ot.......
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H.R. 3309 - The Innovation Act
December 17, 2013
Post by Blog Staff
On December 5, 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act", with bipartisan support by an overwhelming margin of 325-91 votes. H.R. 3309 was drafted to address the perceived growing problem of abusive patent litigation attributed to alleged "patent trolls." Early next year, the Senate will likely consider a companion bill, S. 1720, the "Patent Transparency and Improv.......
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Nondisclosure of test results disclosed to testifying expert results in sanctions, but not dismissal
April 09, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in-part and reversed-in-part a district court's ruling sanctioning the plaintiffs and their attorney in a case both monetarily and by striking the plaintiffs' pleadings. The sanctionable conduct was the withholding of certain test results of the allegedly infringing product that arguably showed the product did not infringe. The test results were disclos.......
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Today's Federal Circuit practice tip: don't misrepresent the record or the law
March 31, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit awarded sanctions against the plaintiff-appellant for filing and pursuing a frivolous appeal against one of four defendant-appellees. The court observed the plaintiff-appellant failed to explain how the district court erred in its determination that this defendant did not infringe and also made misrepresentations of the record and law in its briefing on appeal.In a separ.......
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Failure to disclose patents to SSO results in unenforceabilty against products using standard
March 23, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in-part a district court decision that a patentee had breached a duty to disclose relevant video-compression technology patents while participating in a joint video team standards-setting organization (SSO). The Federal Circuit, however, reversed in part the district court decision finding the patents unenforceable against the world, instead holding the patents .......
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First Circuit: Don't expect to win on appeal if you admit 7 of 8 likelihood of confusion factors
September 02, 2008
Post by Blog Staff
In a decision Friday, the First Circuit affirmed a district court's summary judgment of trademark infringement and an associated award of the defendant's profits and attorney fees to the plaintiff. The defendant used the plaintiff's registered marks in both the metatags of its website as well as in white text on a white background in the body of the site in an effort to cause consumers searching for t.......
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Finding of inequitable conduct without considering materiality vacated
August 06, 2008
Post by Blog Staff
In a decision on Friday, the Federal Circuit reversed a district court's summary judgment of invalidity and noninfringement and subsequent finding of inequitable conduct. The court also vacated the district court's exceptional case finding and the associated award of attorney's fees.The plaintiff was initially awarded partial summary judgment of infringement of six patents. The district judge then a.......
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Seventh Circuit: Prevailing defendants should have greater presumption of fees in copyright cases
July 11, 2008
Post by Blog Staff
In a decision Wednesday, the Seventh Circuit reversed a district court's denial of attorney fees to a prevailing defendant in a copyright case. The district court found that, as a matter of law, no copyright infringement occurred, but declined to award attorney's fees.The Seventh Circuit reversed. The court held the suit was frivolous, and brought in bad faith. The plaintiff deposed all of the defendan.......
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Failure to consider evidence of good faith leads to reversal of inequitable conduct finding
June 25, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's finding of no infringement and invalidity for obviousness, and reversed the district court's finding of unenforceability due to inequitable conduct.The Federal Circuit, citing KSR, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill in the art would employ, and held th.......
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Litigation misconduct and inequitable conduct lead to exceptional case, fees for defendant
June 18, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed an award of attorneys' fees for a prevailing defendant in an infringement case. The district court held the case was exceptional under § 285 because the patent holder had engaged in inequitable conduct (a finding previously affirmed), asserted frivolous claims, and engaged in litigation misconduct. The district court also held that it would be mani.......
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Three sentences insufficient to explain why a case is exceptional
June 17, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit vacated an award of attorney fees under § 285. The district court only provided a three-sentence explanation as to why the case was exceptional. The Federal Circuit found this insufficient, as there was no explanation of the facts underlying the findings made by the court. As a result, the court vacated the award and remanded for more detailed findings. Innova.......
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Ninth Circuit: No statutory damages for continuing infringement that began before registration
June 16, 2008
Post by Blog Staff
In a decision last week, the Ninth Circuit reversed a district court's award of statutory damages for copyright infringement and affirmed the district court's default judgment award of attorney's fees for trademark infringement. The plaintiff's copyright registration had an effective date of approximately one month after the first act of infringement, and nearly two years after first publication........
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Offer of judgment providing full recovery mooted case, preventing opinion regarding spoliation
May 01, 2008
Post by Blog Staff
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 agains.......
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Denial of injunction against sending letters asserting infringement affirmed
April 10, 2008
Post by Blog Staff
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 par.......
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Sixth Circuit: Partial fees to copyright defendant affirmed given plaintiff's litigation tactics
April 01, 2008
Post by Blog Staff
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 sum.......
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Patentee cannot recapture claim scope disavowed during prosecution to prove infringement
March 24, 2008
Post by Blog Staff
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 disclai.......
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Fifth Circuit affirms injunction against trademark infringement in Saudi Arabia
February 29, 2008
Post by Blog Staff
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.......
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Seventh Circuit: Dismissal with prejudice makes defendant "prevailing party" and eligible for fees
February 21, 2008
Post by Blog Staff
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.......
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Federal Circuit once again affirms that saving patented seeds for replanting is infringement
February 06, 2008
Post by Blog Staff
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.......
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When market entry fee part of damages for patent infringement, permanent injunction inappropriate
January 21, 2008
Post by Blog Staff
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 th.......
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Fifth Circuit: Prevailing defendant in file sharing copyright case not entitled to attorney fees
January 07, 2008
Post by Blog Staff
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 action.......
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Ninth Circuit: Attorney fees only available for trademark counterfeiting when actual damages sought
December 20, 2007
Post by Blog Staff
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 subsecti.......
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Seventh Circuit: $70,000 in attorney fees affirmed for copyright and trademark appeal
November 29, 2007
Post by Blog Staff
Back in March, we wrote about a copyright and trademark case involving a novelty doll, "Pull My Finger Fred." In the case's previous trip to the Seventh Circuit, the court affirmed a verdict of copyright and trademark infringement, $291,000 in damages, and $575,000 in attorneys' fees. Now the parties are back, this time disputing the amount of attorneys' fees to be awarded on appeal. Whil.......
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Failure to discover title defect doesn't make case exceptional; Rule 11 burden-shifting inapplicable
November 02, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit addressed when a case may be considered "exceptional" under 35 U.S.C. § 285, and therefore potentially warrant an award of attorney fees. The plaintiff purchased rights to a patent "as is" from a company going through bankruptcy. However, it was later revealed that the company did not have full legal title to the patent, because all inventors.......
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Judge sanctions Qualcomm for concealing over 200,000 pages of documents, providing false testimony
August 08, 2007
Post by Blog Staff
It's been a rough week for Qualcomm. On Monday, the Bush administration let stand the ITC ruling barring import of mobile phones using certain Qualcomm chips unless a license fee is paid to Broadcom, a competing company who holds patents covering the power management technology used in the chips. Also Monday, a federal judge in California found that Qualcomm had committed serious litigation misconduct in a.......
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Seventh Circuit: no evidence of use of "Stealth" mark, cancellation affirmed
July 09, 2007
Post by Blog Staff
In a ruling today, the Seventh Circuit affirmed the cancellation of one of Leo Stoller's many "STEALTH" registrations (owned by one of his companies) for lack of use. The registration in question for "baseball bats, softball bats, and t-ball bats," was the basis for a suit brought against baseball hall of famer George Brett and his company, Brett Brothers Sports International, when they.......
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Sixth Circuit affirms copyright infringement award against karaoke disc maker
June 26, 2007
Post by Blog Staff
In a decision today, the Sixth Circuit affirmed an award of $806,000 in statutory damages plus attorney fees in a copyright case. The case was brought by a copyright holder against a manufacturer of karaoke discs incorporating the compositions to which the plaintiffs held the copyright.The court upheld the award and finding of willful infringement over the defendant's challenges under the Due Process Clause.......
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Seventh Circuit issues a stinker of an opinion in copyright case
March 20, 2007
Post by Blog Staff
The Seventh Circuit succinctly sums up the field of commerce of its decision today in JCW Investments, Inc. v. Novelty, Inc.: Somewhat to our surprise, it turns out that there is a niche market for farting dolls, and it is quite lucrative. The case presents some interesting issues, such as whether the copyright in such a doll is valid and infringed, whe.......
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Voluntary dismissal prevents award of attorney fees under § 285
February 27, 2007
Post by Blog Staff
In a recent case, the Federal Circuit found that when a plaintiff voluntarily dismisses its case under Rule 41(a)(1)(i) before an answer is served, the defendant is not a "prevailing party." As a result, attorney fees under § 285 could not be awarded by the district court. More details of the case after the jump. RFR Industries holds two patents directed toward railroad crossing fillers, .......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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