If the smallest salable unit has non-infringing features, the patentee must further apportion the royalty

Finjan v. Blue Coat was decided on January 10, 2018 on appeal from the Northern District of California. A jury found defendant Blue Coat liable for infringement of four patents (the ‘633, ‘731, ‘844, and ‘968) owned by plaintiff Finjan, and awarded approximately $39.5 million in reasonable royalty damages. The patents related to internet …

Fees awarded because plaintiff continued with meritless eligibility arguments after Alice

Inventor Holdings v. Bed Bath & Beyond was decided on December 8, 2017 on appeal from the District of Delaware. After the Supreme Court decided Alice, defendant BBB won judgment on the pleadings that plaintiff Inventor Holdings’ patent was invalid under Alice. BBB then moved for attorney fees. The district court granted …

Seventh Amendment does not require a jury trial for attorney-fees factual inquiries

AIA America v. Avid was decided on August 10, 2017 on appeal from the Eastern District of Pennsylvania. There, after the jury found against plaintiff AIA on patent ownership and co-inventorship, the district court found AIA lacked standing to assert the patents. After allowing “the parties to submit extensive briefing, evidence, …

Case exceptional where plaintiff litigated after a conclusive Markman order, and had nuisance settlements

AdjustaCam v. Newegg was decided on July 5, 2017 on appeal from the Eastern District of Texas. There, Plaintiff AdjustaCam sued Defendant Newegg and dozens of other defendants for patent infringement, voluntarily dismissing most defendants early in the litigation. Though AdjustaCam continued to litigate against Newegg through a Markman order and extended …

Case not exceptional where accused products were different than those earlier held non-infringing

Parallel Networks v. Kayak is a non-precedential case decided on July 5, 2017 on appeal from the Eastern District of Texas. There, after granting Defendants Kayak’s motion for summary judgment of non-infringement, the district court denied their motion for attorney fees, finding nothing exceptional about either Plaintiff Parallel Networks’ infringement theory or …

Section 145 requires applicant pay the USPTO’s attorney fees after district court appeal

Nantkwest v. Matal was decided on June 23, 2017 on appeal from the Eastern District of Virginia. There, the USPTO rejected Nantkwest’s patent application on obviousness grounds. The PTAB affirmed the rejection, and Nantkwest appealed to the district court under 35 U.S.C. § 145. After prevailing at the district court, the USPTO …

Case not exceptional where defendant did not seek summary judgment of noninfringement

Prism v. T-Mobile is a nonprecedential case decided on June 23, 2017. There, after a jury verdict of non-infringement, the district court denied plaintiff Prism’s motions for new trial and for JMOL of infringement, and denied defendant T-Mobile’s motions for attorney fees and for patent-ineligibility under § 101. Both parties …

Fees warranted where party showed pattern of suing and settling for sums below costs of defense

Rothschild v. Guardian was decided on June 5, 2017 on appeal from the Eastern District of Texas. There, the district court granted plaintiff Rothschild’s voluntary motion to dismiss. The court then denied defendants’ cross motion for attorney fees because Rothschild voluntarily withdrew its complaint within Rule 11’s safe harbor period (motions for …

Patentee cannot bypass marking statute by disclaiming the unmarked feature

Rembrandt v. Samsung was decided on April 17, 2017 on appeal from the Eastern District of Texas. The patents related to Bluetooth technology. There, the jury found that defendant Samsung infringed plaintiff Rembrandt’s patents, and awarded $15.7 million in damages. After trial, the district court denied Samsung’s motion for JMOL on obviousness …

Federal Circuit lists non-exclusive factors to consider when assessing exceptionality under §285

University of Utah v. Max Planck was decided on March 23, 2017 on appeal from the District of Massachusetts. There, the district court granted defendant Max Planck’s motions for summary judgment regarding the joint inventorship claims. The district court then denied Max Planck’s motion for attorney fees despite that plaintiff University of …