CAFC Remands Back To PTAB Instructing Them To Conduct The Analysis And Correct The Mistakes In Wearable Technology IPR Case
Adele Critchley | July 22, 2020
Fitbit, Inc., v. Valencell. Inc.
July 8, 2020
Before Newman, Dyk and Reyna. Opinion by Newman
Background:
Apple Inc., petitioned the Board for IPR (Inter Partes Review) of claims 1 to 13 of the U.S. Patent No., 8,923,941 (the ‘941 patent) owned by Valencell, Inc. The Board granted the petition in part, instituting review of claims 1, 2 and 6 to 13, but denying claims 3 to 5.
Fitbit then filed an IPR petition for claims 1, 2 and 6 to 13, and moved for joinder with Apple. The Board granted Fitbit’s petition and granted the motion for joinder.
After the PTAB trial, but before the Final Written Decision, the Supreme Court decided SAS Insitute, Inc., v. Iancu, 138 S. Ct 1348 (2018), holding that all patent claims challenged in an IPR petition must be reviewed by the Board, if the petition is granted. Thus, the Board re-instituted the Apple/Fitbit IPR to add claims 3 to 5.
The Board issued a Final Written Decision that held claims 1, 2 and 6 to 13 unpatentable, and claims 3 to 5 not unpatentable. Apple withdrew and Fitbit appealed the decision on claims 3 to 5. Valencell challenged Fitbit’s right to appeal claims 3 to 5.
Issues:
I. JOINDER AND RIGHT OF APPEAL
“Valencell’s position was that Fitbit did not have standing to appeal the portion of the Board’s decision that related to claims 3 to 5, because Fitbit’s IPR petition was for claims 1, 2 and 6 to 13.” Citing Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1285 (Fed. Cir. 2017), Valencell argued that Fitbit had “waived any argument it did not present in its petition for IPR.” That is, Valencell argued that Fitbit does not have the status of “party” for the purpose of the appeal because “Fitbit did not request review of claims 3 to 5 in its initial IPR petition.”
Fitbit countered that although it did not “seek to file a separate brief after claims 3 to 5 were added to the IPR” the briefs were not required in order to present the issues, and the CAFC agreed that the circumstances do not override Fitbit’s statutory right of appeal.
The CAFC concluded that “Fitbit’s rights as a joined party applies to the entirety of the proceeding” including the right of appeal.
II. CONSTRUCTION OF THE CLAIMS ON APPEAL
Claims 3 to 5 at issue are as follows:
3. The method of claim 1, wherein the serial data output is parsed out such that an application-specific interface (API) can utilize the physiological information and motion-related information for an application.
4. The method of claim 1, wherein the application is configured to generate statistical relationships between subject physiological parameters and subject physical activity parameters in the physiological information and motion-related information.
5. The method of claim 4, wherein the application is configured to generate statistical relationships between subject physiological parameters and subject physical activity parameters via at least one of the following: principal component analysis, multiple linear regression, machine learning, and Bland-Altman plots.
- CLAIM 3
The Board did not review patentability of claim 3 on the asserted grounds of obviousness holding that the claim is “not unpatentable” based solely on their “rejection of Fitbit’s proposed construction of the term application-specific interface (API).
Specifically, Fitbit argued that the “broadest reasonable interpretation of “application-specific interface (API)…include[s] at least an application interface that specifies how some software component should interest with each other.” Fitbit’s interpretation was based heavily on the use of “API” which followed application-specific interface. API meaning ‘application programming interface.’
Valencell argued for a narrower meaning, based upon the specification and the prosecution history. In particular, during prosecution the applicant had relied upon the narrow scope to distinguish from a cited reference.
The Board concluded the narrower claim construction was correct, and rejected Fitbit’s broader construction. The CAFC agreed with the Boards conclusion as to the correct claim construction.
However, following the Boards rejection of Fitbit’s claim construction they did not review the patentability of claim 3, as construed, on the asserted ground of obviousness. The Board explained that because “Petitioner’s assertions challenging claim 3 are based on the rejected construction…the evidentiary support relied upon is predicated upon the same” and so “[W]e do not address this claim further.”
CAFC held this was erroneous, vacated the Board’s decision and remanded for determination of patentability in light of the cited references.
- CLAIMS 4 AND 5 – ANTECEDENT BASIS OF ‘THE APPLICATION’
The Board held that claims 4 and 5 were “not unpatentable” because “the Board could not determine the meaning of the claims due to the term “the application” lacking antecedent basis.
The mistake had occurred due to the cancellation of claim 2, and erroneous renumbering of claim 4. Both Fitbit and Valencell agreed to this. Board declined to accept the parties’ shared view, stating:
Although we agree that the recitation of the term “the application” in claim 4 lacks antecedent basis in claim 1, we declined to speculate as to the intended meaning of the term. Although Petitioner and Patent Owner now seem to agree on the nature of the error in claims 4 and 5 [citing briefs], we find that the nature of the error in claims 4 and 5 is subject to reasonable debate in view of the language of claims 1 and 3–5 and/or that the prosecution history does not demonstrate a single interpretation of the claims.
The CAFC disagreed with the Board, holding that although “the Board states that the intended meaning of the claims is “subject to reasonable debate,” we perceive no debate. Rather, the parties to this proceeding agree as to the error and its correction.”
The CAFC concluded that on remand the Board shall fixed the error and determine patentability of corrected claims 4 and 5:
The preferable agency action is to seek to serve the agency’s assignment under the America Invents Act, and to resolve the merits of patentability. Although the Board does not discuss its authority to correct errors, there is foundation for such authority in the America Invents Act, which assured that the Board has authority to amend claims of issued patents. See 35 U.S.C. § 316(d). . . . The concept of error correction is not new to the Agency, which is authorized to issue Certificates of Correction.
Comments:
A joined party has full rights to appeal a PTAB final decision.
During an IPR, the Board has authority to correct mistakes in the claims of an issued patents, in particular those where a certificate of correction would be fitting.
Always, be careful when renumbering claims for antecedent issues.
CAFC Finds Claim Limitations Missing in the Prior Art May Still Be Obvious with Common Sense
Michael Caridi | July 13, 2020
B/E AEROSPACE, INC. v. C&D ZODIAC, INC
June 26, 2020
Lourie, Reyna, and Hughes, Opinion by Reyna.
Summary:
On appeal from an inter partes review proceeding wherein the petitioner, C&D Zodiac, Inc. (“Zodiac”), successfully challenged two patents owned by B/E Aerospace, Inc. (“B/E”), U.S. Patent No. 9,073,641 (“the ’641 patent”) and U.S. Patent No. 9,440,742 (“the ’742 patent”) B/E asserted that the PTAB had failed to consider all the limitations of the claims. The patents involved space-saving technologies for aircraft enclosures, such as lavatory enclosures, designed to “reduce or eliminate the gaps and volumes of space required between lavatory enclosures and adjacent structures.”
The CAFC concluded that the Board’s final determination of obviousness by predictable result of a known element and common sense was correct and therefore affirmed the Board’s decision.
Details:
Claim 1 of the ’641 patent was designated as representative of the challenged claims.
1. An aircraft lavatory for a cabin of an aircraft of a type that includes a forward-facing passenger seat that includes an upwardly and aftwardly inclined seat back and an aft-extending seat support disposed below the seat back, the lavatory comprising:
a lavatory unit including a forward wall portion and defining an enclosed interior lavatory space, said forward wall portion configured to be disposed proximate to and aft of the passenger seat and including an exterior surface having a shape that is substantially not flat in a vertical plane; and
wherein said forward wall portion is shaped to substantially conform to the shape of the upwardly and aftwardly inclined seat back of the passenger seat, and includes a first recess configured to receive at least a portion of the upwardly and aftwardly inclined seat back of the passenger seat therein, and further includes a second recess configured to receive at least a portion of the aft-extending seat support therein when at least a portion of the upwardly and aftwardly inclined seat back of the passenger seat is received within the first recess.
The appeal focused on the “first recess” and “second recess” limitations, labeled as elements 34 and 100, respectively, in Figure 2 of the ‘641 patent reproduced below.
The IPR had only one instituted ground: that the challenged claims were obvious over the “Admitted Prior Art” and U.S. Patent No. 3,738,497 (“Betts”). The “Admitted Prior Art” included Figure 1. Betts discloses an airplane passenger seat with tilting backrest. Rather than a flat forward-facing wall, Betts discloses a contoured forward-facing wall to receive the tilted backrest. The Court noted that the “lower portion 30” of Betts slants rearwardly to provide space for a seatback 12 and the top 32 of the storage space 16 also slants rearwardly to not interfere with the seatback 12.
The PTAB had ruled that the Bett’s contoured wall design met the “first recess” limitation and that skilled artisans (airplane interior designers) would have been motivated to modify the flat forwardfacing wall of the lavatory in the Admitted Prior Art with Betts’s contoured, forward-facing wall to preserve space in the cabin.
While the cited art does not disclose the “second recess” to receive passenger seat supports, the Board agreed with Zodiac that creating a recess in the wall to receive the seat support was an obvious solution to a known problem and found that Zodiac “established a strong case of obviousness based on the Admitted Prior Art and Betts, coupled with common sense and the knowledge of a person of ordinary skill in the art.”
B/E’s appeal argued that the Board’s obviousness determination is erroneous because it improperly incorporated a second recess limitation not disclosed in the prior art.
Analysis
The CAFC determined that only the “second recess” limitation was at issue. They found no error in the PTAB’s approaches to finding the “second recess” obvious. First noting that the prior art yields a predictable result, the “second recess,” because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so. The Court noted the evidence provided by Zodiac’s expert and quoted the often cited KSR recitation: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. . . . If a person of ordinary skill in the art can implement a predictable variation § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The Court further affirm the Board’s conclusion that the challenged claims would have been obvious because “it would have been a matter of common sense” to incorporate a second recess in the Admitted Prior Art/Betts combination. B/E argued that the Board legally erred by relying on “an unsupported assertion of common sense” to “fill a hole in the evidence formed by a missing limitation in the prior art.” The Court again cited KSR, noting that common sense teaches that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. Id at 421. (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). They found the PTAB’s “invocation of common sense was properly accompanied by reasoned analysis and evidentiary support” noting that the Board dedicated more than eight pages of analysis to the “second recess” limitation and relied on detailed expert testimony.
The Court noted their decision in Perfect Web Techs, Inc. v. InfoUSA, Inc., that “[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” 587 F.3d 1324, 1328 (Fed. Cir. 2009). They concluded that the Board properly adequately explained their reasoning that the missing claim limitation (the “second recess”) involves repetition of an existing element (the “first recess”) until success is achieved (reasoning that the logic of using a recess to receive the seat back applies equally to using another recess to receive the aft extending seat support).
The CAFC therefore affirmed the PTAB’s finding of the challenged claims unpatentable.
Take Aways
Patent holders need to be cautious in relying on simple limitations. Such limitations may be considered obvious even if not clearly recited in the prior art. Consideration of whether the use of common sense by a skilled artisan would result in the inclusion of the limitation needs to be taken into consideration.
Nexus for Secondary Considerations requires Coextensiveness between a product and the claimed invention
Andrew Melick | June 26, 2020
Fox Factory, Inc. v. SRAM, LLC
May 18, 2020
Lourie, Mayer and Wallach. Opinion by Lourie.
Summary:
SRAM sued Fox Factory for infringing U.S. Patent 9,291,250 (the ‘250 patent) and the parent patent U.S. Patent 9,182,027 (the ‘027 patent) to bicycle chainrings having teeth that alternate between widened teeth that better fit a gap between outer plates of a chain and narrower teeth to fit a gap between inner plates of a chain. Fox Factory filed IPRs against each patent. SRAM provided evidence of secondary considerations and argued that a greater than 80% gap-filling feature of the X-Sync chainring was crucial to its success for solving chain retention problem. The PTAB held that both patents are not unpatentable as obvious relying in part on secondary consideration evidence provided by SRAM. On appeal, the CAFC vacated the PTAB’s decision with regard to the ‘027 patent because the SRAM X-Sync chainring is not coextensive with the claims of the ‘027 patent that do not recite the greater than 80% gap-filling feature. However, the CAFC affirmed the PTAB’s decision for the ‘250 patent because the claims include the greater than 80% gap-filling feature.
Details:
The ’250 patent and the ‘027 patent are to bicycle chainrings. Some figures of the patents are provided below.
This chainring is designed to be a solitary chainring that does not need to switch between different size chainrings. Since it is a solitary chainring, the chainring can be designed to provide a tighter fit with the chain. A conventional chain has links that are alternatingly narrow and wide, but the conventional chainring has teeth that are all the same size. SRAM designed a chairing to have alternating teeth having widened teeth to fit the wide gaps and narrow teeth to fit the narrower gaps. SRAM’s product the X-Sync chainring that implements this design has been praised for its chain retention.
Claim 1 of the ‘250 patent is provided:
1. A bicycle chainring of a bicycle crankset for engagement with a drive chain, comprising:
a plurality of teeth extending from a periphery of the chainring wherein roots of the plurality of teeth are disposed adjacent the periphery of the chainring;
the plurality of teeth including a first group of teeth and a second group of teeth, each of the first group of teeth wider than each of the second group of teeth; and
at least some of the second group of teeth arranged alternatingly and adjacently between the first group of teeth,
wherein the drive chain is a roller drive chain including alternating outer and inner chain links defining outer and inner link spaces, respectively;
wherein each of the first group of teeth is sized and shaped to fit within one of the outer link spaces and each of the second group of teeth is sized and shaped to fit within one of the inner link spaces; and
wherein a maximum axial width about halfway between a root circle and a top land of the first group of teeth fills at least 80 percent of an axial distance defined by the outer link spaces.
In the IPR for the ‘250 patent, Fox Factory cited JP S56-42489 to Shimano and U.S. Patent 3,375,022 to Hattan. Shimano teaches a bicycle chainring with widened teeth to fit into the outer chain links of a conventional chain. Hattan describes that a chainring’s teeth should fill between 74.6% and 96% of the inner chain link space. Fox Factory argued that the claims would have been obvious because one of ordinary skill in the art would have seen the utility in designing a chainring with widened teeth to improve chain retention as taught by Shimano, and one of ordinary skill in the art would have looked to Hattan’s teaching with regard to the percentage of the link space that should be filled.
The PTAB held the claims to be non-obvious because of the axial fill limitation “at the midpoint of the teeth.” The PTAB found that Hattan taught the fill percentage at the bottom of the tooth instead of at the midpoint. The PTAB also found that SRAM’s evidence of secondary considerations rebutted Fox Factory’s arguments of obviousness.
On appeal, Fox Factory argued that the only difference between the prior art and the claimed invention is that the fill limitation is measured halfway up the tooth. Regarding secondary considerations, Fox Factory argued that a nexus between the claimed invention and the evidence of success of the X-Sync chainring was not demonstrated because the success is due to other various unclaimed aspects of the X-Sync chainring.
The CAFC stated that Fox Factory is correct that “a mere change in proportion … involves no more than mechanical skill, rather than the level of invention required by 35 U.S.C. § 103.” However, the CAFC stated that the PTAB “found that SRAM’s optimization of the X-Sync chainring’s teeth, as claimed in the ‘250 patent, displayed significant invention.” The CAFC pointed out that SRAM provided evidence that the success of the X-Sync chainring surprised skilled artisans, evidence of industry skepticism and subsequent praise, and evidence of a long-felt need to solve chain retention problems. The X-Sync chainring also won an award for “Innovation of the Year.” Based on the evidence, the CAFC stated that the PTAB did not err in concluding that the evidence of secondary considerations defeated the contention of routine optimization.
Fox Factory argued that the CAFC’s previous decision on the ‘027 patent requires vacatur in this case. In the appeal of the IPR for the ‘027 patent the CAFC stated that the PTAB misapplied the legal requirement of showing a nexus between evidence of secondary considerations and the obviousness of the claims of the patent. The CAFC stated that the patent owner must show that “the product from which the secondary considerations arose is coextensive with the claimed invention.” In the IPR for the ‘250 patent, SRAM argued that the greater than 80% gap-filling feature of the X-Sync chainring was crucial to its success. But the claims of the ‘027 patent do not include this greater than 80% gap filling feature. Thus, in the ‘027 appeal, the CAFC stated that no reasonable factfinder could decide that the X-Sync chainring was coextensive with a claim that did not include the greater than 80% gap filling feature, and vacated the decision of the PTAB.
In this case, the CAFC pointed out that the claims of the ‘250 patent include the greater than 80% gap filling feature, and thus, the X-Sync chainring is coextensive with the claims. The CAFC also stated that the unclaimed features relied on by Fox Factory as contributing to the success are to some extent incorporated into the 80% gap-filling feature. Thus, the CAFC found that substantial evidence supports the PTAB’s findings on secondary considerations and nexus, and the CAFC stated that they agree with the PTAB’s conclusion that the claims of the ‘250 patent would not have been obvious.
Comments
When arguing secondary considerations, make sure that there is nexus between the evidence and the claims. Specifically, you need to make sure that the product from which the secondary considerations arose is “coextensive” with the claimed invention. A product that falls within the scope of the claim is not necessarily coextensive with the claim.
This case is also a reminder to include claims having varying scope. In this case, SRAM’s claims survived because of the 80% gap-filling feature which was not included in the claims of the parent patent.
Federal Circuit Reverses the District Court’s Award of Attorneys’ Fees Due to the District Court’s Failure to Provide a Clear Explanation of the Supporting Reasons
WHDA Blogging Team | June 17, 2020
MUNCHKIN, Inc. v. LUV ‘N Care, Ltd.
June 9, 2020
Dyk, Taranto, and Chen (Opinion by Chen)
Summary
Munchkin, Inc. (Munchkin) sued Luv ‘N Care, Ltd. (LNC) in the District Court for the Central District of California based patent infringement, trademark infringement and trade dress infringement of its’ spill proof containers. Before the District Court, Munchkin voluntarily dismissed all of its’ legal claims against LNC. After dismissal of these claims, LNC filed a motion for attorneys’ fees, which was awarded to LNC by the District Court. On appeal, the Federal Circuit reversed the award of attorneys’ fees, explaining that the District Court abused its’ discretion in awarding attorneys’ fees because LNC’s motion for attorneys’ fees and the District Court’s decision awarding such fees did not provide a clear explanation of the reasons supporting an award for the attorneys’ fees, noting that it is particularly important to provide a clear explanation of the reasons supporting an award for the attorneys’ fees whenthe claims are notfully litigated before the District Court.
Background
- Subject Matter at Issue
The present case relates to spill-proof containers, and involves patent infringement, trademark infringement and trade dress infringement claims related to such spill-proof containers.
Fig. 3 of U.S. Patent No. 8,739,993
- Procedural Background
This case is an appeal from the United States District Court for the Central District of California.
Munchkin, Inc. (Munchkin) filed a lawsuit in the District Court against Luv n’ Care, Ltd. (LNC) for trademark infringement and unfair competition claims related to spill-proof drinking containers. A year later, the District Court granted Munchkin leave to amend the complaint to include new trademark infringement claims and trade dress infringement claims and new patent infringement claims based on U.S. Patent No. 8,739,993 (the ’993 patent).
During litigation, Munchkin voluntarily dismissed all of its non-patent claims with prejudice. Then, in an inter partes review (IPR) before the Patent Trial and Appeal Board, Munchkin’s patent was held unpatentable. Thereafter, Munchkin voluntarily dismissed its’ patent claims.
Thereafter, LNC filed a motion for attorneys’ fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a), and the District Court granted attorneys’ fees to LNC finding the case to be “exceptional” based on LNC’s arguments.
Before the Federal Circuit, Munchkin appeals, arguing that the District Court’s determination that this was an “exceptional” case lacks a proper foundation because LNC’s motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional.
The Federal Circuit’s Decision
The Legal Bases for Attorneys’ Fees
Under 35 U.S.C. § 285 of the Patent Act, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” Similarly, under 15 U.S.C. § 1117(a) of the Lanham Act pertaining to trademark and trade dress infringement, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.”
In Octane Fitness, 572 U.S. 545 (S. Ct. 2014), the U.S. Supreme Courtheld that an exceptional case is “one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” This analysis considers the case based on the totality of the circumstances, requiring a movant to show the case is exceptional by a preponderance of the evidence.
The Federal Circuit’s Review
The Federal Circuit reviews the District Court’s determination that a case is exceptional for abuse of discretion. As explained by the Federal Circuit, “[a] District Court abuses its discretion when it makes a clear error of judgment in weighing relevant factors or in basing its decision on an error of law or on clearly erroneous factual findings.”
According to the Federal Circuit, “[w]hile we generally give great deference to a District Court’s exceptional-case determination, a District Court nonetheless must “provide a concise but clear explanation of its reasons for the fee award.”
The Federal Circuit remarked that: “This case represents ‘an unusual basis for fees,’ in that the District Court’s exceptional-case determination rests on an examination of issues—trademark infringement, trade dress validity, and patent validity—that were not fully litigated before the court.” The Federal Circuit further explained that: “when the bases of an attorneys’ fee motion rest on issues that had not been meaningfully considered by the District Court, as is the case here, ‘a fuller explanation of the court’s assessment of a litigant’s position may well be needed when a District Court focuses on a freshly considered issue than one that has already been fully litigated.’” The Federal Circuit also noted that the patent, trademark, and trade dress claims were all new issues presented in the context of the motion for attorneys’ fees, but that LNC failed to make a detailed, fact-based analysis of Munchkin’s litigating positions to establish that the claims were all wholly lacking in merit.
- The Patent Claims
With respect to LNC’s patent claim, the Federal Circuit held that “neither LNC’s fee motion nor the District Court’s opinion comes close to supporting the conclusion that Munchkin acted unreasonably.” The Federal Circuit also points out that the District Court had also adopted Munchkin’s claim interpretation, which “erected a serious hurdle to LNC’s invalidity challenge.” The Federal Circuit added that the fact that the District Court had adopted Munchkin’s claim interpretation made “the need for a full and detailed explanation in this case for why Munchkin’s litigating position was exceptionally weak all the more imperative.”
The Federal Circuit also criticized the District Court’s conclusion that Munchkin unreasonably maintained its’ patent infringement lawsuit once the Patent Board instituted the IPR on the bases that “(1) published statistics at the time indicated that the Patent Board cancels some of a patent’s instituted claims 85% of the time and cancels all of the instituted claims 68% of the time, (2) the Patent Board’s final decision found all of the ’993 patent’s claims unpatentable, and (3) this court summarily affirmed that decision.” The Federal Circuit explained that the IPR statistics combined with the meritorious outcome are not enough, noting that “they tell us nothing about the substantive strength of Munchkin’s litigating position (considering both the governing law and the facts of the case).”
The Federal Circuit also criticized the District Court’s superficial reference to prior art to a Playtex Twist ‘N Click cup product as purportedly evidencing weakness of the validity of the patent because such prior art was not discussed in detail and was not even formally part of the court record. The Federal Circuit explained that LNC’s motion needed to go much further into the facts to meet its’ burden of proof.
Accordingly, the Federal Circuit held that the District Court’s finding in relation to the patent claim was an abuse of discretion. (NOTE: Here, the District Court had actually granted attorneys’ fees for both proceedings before the court and before the U.S.P.T.O. Although the Federal Circuit dismissed the award of attorneys’ fees, the Federal Circuit expressed that it would not address whether 35 U.S.C. 285 permits recovery of attorneys’ fees related to proceedings before the U.S.P.T.O.)
- The Trademark Claims
With respect to LNC’s trademark claim, the Federal Circuit held that an ultimate problem with the District Court’s finding that the trademark claims were “exceptional” under § 1117(a) is that it conflicts with the court’s earlier order granting Munchkin’s motion to amend the complaint to add the new trademark claim. Accordingly, the Federal Circuit indicated that “Munchkin cannot be faulted for litigating a claim it was granted permission to pursue,” especially “[a]bsent misrepresentation to the court.”
Furthermore, the Federal Circuit also noted that as with the patent claims, the District Court was required to make specific findings about the trademark infringement merits themselves, pertaining to a formal likelihood of confusion analysis. Moreover, the Federal Circuit also emphasized that “Munchkin’s dismissal of its claims with prejudice also does not establish, by itself, a finding that the merits were so substantively weak as to render the claims exceptional,” noting that “[t]here are numerous reasons, including Munchkin’s asserted desire to streamline the litigation, to drop a claim, not just substantive weakness.”
Accordingly, the Federal Circuit held that the District Court’s finding in relation to the trademark claim was also an abuse of discretion.
- The Trade Dress Claims
With respect to LNC’s trade dress claim, as with the patent and trademark claims, the Federal Circuit explained that “none of these barebones allegations justify a finding that Munchkin’s position that it owned a protectable, valid trade dress right was unreasonable.” Moreover, the Federal Circuit also noted that, like the trademark claim, the District Court had allowed Munchkin to amend the complaint to add the new trade dress claim.
Accordingly, the Federal Circuit reversed the District Court’s granting of attorneys’ fees.
Takeaways
- When seeking attorneys’ fees in patent, trademark and/or trade dress matters, it is important to make sure that motions for attorneys’ fees provide a clear explanation of the reasons supporting an award for the attorneys’ fees – i.e., the reasons must demonstrate the unreasonableness of opposing party’s conduct under the governing law and the facts of the case.
Tags: 15 U.S.C. § 1117(a) > 35 U.S.C. § 285 > Attorneys’ Fees > Exceptional Cases
