Lost profits award reversed because of non-infringing substitute; permanent injunction then vacated

Presidio v. American Technical Ceramics was decided on November 21, 2017 on appeal from the Southern District of California. The invention concerned capacitors for storing and releasing energy. The district court granted defendant ATC’s motion for summary judgment on absolute intervening rights. The jury then returned a verdict of direct and induced infringement, …

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 …

Attorney fee award vacated because party no longer the prevailing party

Chaffin v. Braden was decided on June 23, 2017 on appeal from the Southern District of Texas. There, the district court granted defendant Braden’s motion for summary judgment of non-infringement, adopting Braden’s claim construction. The court subsequently found the case exceptional and awarded attorney fees to Braden. Chaffin appealed. The Federal Circuit reversed …

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Prism v. T-Mobile is a nonprecedential case decided on June 23, 2017.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 …

Pattern of enforcing patent rights doesn’t make a losing case exceptional

Checkpoint v. All-Tag was decided on June 5, 2017. There, a jury found Plaintiff Checkpoint’s patent not infringed, not invalid, and not unenforceable. After appeals to the Federal Circuit, and to the Supreme Court (in conjunction with Octane Fitness), the case returned to the district court on remand. On remand, …

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 …

Supreme Court: § 289’s “article of manufacture” covers a component of the end product

Samsung v. Apple was decided by the Supreme Court on December 6, 2016 on appeal from the Northern District of California. There, a jury found that several of defendant Samsung’s smartphones infringed plaintiff Apple’s design patents, and awarded Apple $399 million, the entire profit Samsung made from the infringing phones. The Federal Circuit affirmed …

Declaratory action OK despite that DJ-plaintiff didn’t sell or manufacture the product

Asia Vital v. Asetek was decided on September 8, 2016 on appeal from the Eastern District of Virginia. There, the district court dismissed Asia Vital’s declaratory judgment action for lack of subject matter jurisdiction. After bringing suits against other competitors, Asetek sent Asia Vital a letter, accusing it of manufacturing an infringing …

No intervening rights despite that patentee modified the claims after a prior art rejection during reexam

Convolve v. Compaq was decided on February 10, 2016 on appeal from the Southern District of New York. There, the district court granted summary judgment of no infringement, and that liability was precluded by intervening rights arising from a December 2, 2008 substantive amendment to the asserted claims. Plaintiff Convolve appealed. The Federal Circuit …