ip academy 2016: patent infringement damages …
TRANSCRIPT
IP ACADEMY 2016:
PATENT INFRINGEMENT DAMAGES –
RECENT DEVELOPMENTS AND
STRATEGIES TO DEAL WITH AN
UNCERTAIN WORLD
Blair M. Jacobs, Partner, Washington DC
Charles Hawkins, Of Counsel, Washington DC
October 6, 2016
2 INTERPRETING THE TRENDS
3 TRENDS IN PATENT DAMAGES
Renewed emphasis and scrutiny on apportionment
Lost profits are (largely) still dead
Georgia-Pacific continues to provide significant flexibility in
crafting reasonable royalty theories
Courts are granting Daubert motions and motions in limine,
but generally providing “do-overs” for the flawed methodology
Past licenses still the best single source for establishing a
reasonable rate, but battles erupting regarding comparability
Extraterritoriality still a hot issue and Federal Circuit seems
intrigued
Significant clarification of law surrounding inducement will
likely have trickle down impact on damages
Willfulness and enhanced damages easier to prove. Or are
they?
Easier to re-capture attorneys’ fees after Octane?
4 THE STATUTORY FRAMEWORK
35 USC § 284:
Upon finding for the claimant the court shall award the
claimant damages adequate to compensate for the
infringement, but in no event less than a reasonable royalty
for the use made of the invention by the infringer, together
with interest and costs as fixed by the court. . .
The court may receive expert testimony as an aid to the
determination of damages or of what royalty would be
reasonable under the circumstances.
Two basic types of patent damages:
1. Lost profits
2. Reasonable royalties
Rite-Hite Corp. v. Kelley Co. , (Fed. Cir. 1995).
5 LOST PROFITS
Typically preferred route for plaintiffs since larger potential recovery than reasonable royalties alone
Not available for NPEs –requirement that “but for” infringement, patentee would have made profits that were lost
Lost profit can include lost convoyed sales and price erosion on sales that the patent owner made if evidence supports
Courts often rely on four-factor Panduit test to determine:
1. There is a demand for the patented product;
2. There are no acceptable non-infringing substitutes;
3. The patent owner had the manufacturing and marketing capacity to exploit the demand; and
4. The amount of profit the owner would have made absent the infringing conduct.
6 LOST PROFITS—RECENT FEDERAL CIRCUIT CASES
Warsaw Ortho. Inc, v. Nuvasive, Inc., 778 F.3d 1365 (Fed. Cir.
2015)
Convoyed Sales: Patentee must show related products are
“functionally related” and lost profits foreseeable. Products should
not have a use independent from patented device.
Royalty Payments from Related Entities: Lost profits must come
from the lost sales of a product or service the patentee itself was
selling, not related entities.
Plaintiffs pushing “inexorable flow” doctrine
Akamai Tech. Inc, v. Limelight Networks Inc., 805 F.3d 1368
(Fed. Cir. 2015)
Elasticity of Demand: expert must take into account effects of
pricing in determining lost sales. I.e., a lower demand for a more
expensive product.
See also Good Tech. v. Mobileiron, 2015 WL 3882608 (N.D. CA 2015)
7 REASONABLE ROYALTY DAMAGES
Minimum amount successful plaintiff can recover, so this is a
statutory floor on damages (“the floor below which damage
awards may not fall.” Rite-Hite Corp., 56 F.3d at 1544)
May be the only damages option where Plaintiff cannot prove
entitlement to lost profits
Typically calculated as Royalty Rate X Royalty Base, but
plaintiffs can be creative with this
Georgia-Pacific* analyses commonly used
Georgia-Pacific Corp. v. United States Plywood Corp., 318 F.
Supp. 1116, 1121 (S.D.N.Y. 1970), aff’d, 446 F.2d 295 (2d. Cir.
1971).
8 REASONABLE ROYALTY DAMAGES
Three Possible Approaches
1. Established Royalty Rates
Certain considerations that limit this approach
2. Analytical Approach
Comparing the infringer’s actual profit margin to the industry standard or anticipated profit margin
3. Hypothetical Negotiation Using Georgia-Pacific Factors
Most common approach?
Note: The amount of a royalty is always an issue of fact that the patentee must prove by preponderance of the evidence.
9 REASONABLE ROYALTY – GEORGIA PACIFIC FACTORS
The case lists fifteen non-exclusive factors relevant to
hypothetical negotiation:
For discussion purposes, these fifteen factors can be loosely
grouped into five broad categories:
Prior Relevant Licenses (Factors 1-3)
Value of Exclusivity of Invention to Patent Owner (Factors 4-7)
Value of Invention in General (Factors 8-10)
Value of Use of Invention to Infringer or Licensee (Factors 11-13)
The Hypothetical Negotiation (Factors 14-15)
10 REASONABLE ROYALTY - USE OF PRIOR LICENSES
Prior Relevant Licenses
1. The royalties received by the patentee for the licensing of the
patent in suit, proving or tending to prove an established royalty.
2. The rates paid by the licensee for the use of other patents
comparable to the patent in suit.
3. The nature and scope of the license, as exclusive or non-
exclusive; or as restricted or non-restricted in terms of territory or
with respect to whom the manufactured product may be sold.
Practice tip: Prior licenses entered into in settlements, and
negotiations for them, are not privileged. Even if confidential, they
are likely discoverable and may be admissible.
11 REASONABLE ROYALTY - USE OF PRIOR LICENSES
Considerations When Using Prior Licenses
1. Generally must be more than one agreement to show
“established royalty.”
2. Must be based on comparable technology or comparable use of
the invention and must be on comparable economic terms.
• Lump sum versus ongoing royalty
• Technology licensed plays major role in product versus
insignificant component
3. Royalties paid to settle litigation may not be relevant. • Compare LaserDynamics (licenses made to settle actual or
threatened litigation do not accurately evidence an established
royalty)
• With ResQnet (permitted use of litigation settlement in analyzing
established royalty—only in limited circumstances?)
• Query: Strike litigation settlements used by NPEs in business of
litigation?
12 REASONABLE ROYALTY—EMVR VS. APPORTIONMENT
General Concepts:
1. Reasonable Royalty Damages = Damages Attributable to the
Infringing Feature. VirnetX, 767 F.3d at 1326.
This may require apportioning below the value of the Smallest
Saleable Patent Practicing Unit (“SSPPU”).
2. Common Royalty Convention = Royalty Base x Royalty Rate
3. Issue: What is the proper base when the patent covers one
feature of a multi-feature product
EMVR: “Base” is the value of entire product
Apportionment: “Base” is limited to value of patented feature
Concerns with EMVR:
1. Results in excessive damages awards.
2. Skews the damages horizon for jury. VirnetX, 767 F.3d at 1327.
3. Royalty stacking – products covered by many patents. Seymour v.
McCormick, 57 U.S. at 490-91.
13 REASONABLE ROYALTY— LIMITATIONS ON EMVR
EMVR allows for damages based on value of an entire apparatus
containing several features, when the feature patented constitutes
the basis for customer demand. Lucent Techs. v. Gateway, 580
F.3d 1301 (Fed. Cir. 2009).
Basis for Customer Demand:
Entire value of whole machine is properly and legally attributable
to the patented feature. VirnetX (quoting Garretson).
Must be the primary reason that consumers buy the product.
Good Tech. v. MobileIron, (N.D. Cal. 2015) (citing Brocade
Comms. Sys. v. A10 Networks, (N.D. Cal. 2013).
Not enough to merely show:
• patented feature is valuable, important, or even essential
• model with feature sold more than model without feature
EMVR is the exception, not the rule. VirnetX (citing
LaserDynamics). 13
14 CASES ANALYZING EMVR
Reasons for Finding EMVR Does Not Apply:
Evidence that “multiple features” including price contributed to
demand. E.g., Good Tech., (N.D. Cal. 2015); Brocade Commc’ns,
(N.D. Cal. 2013); Inventio, (S.D.N.Y. 2011).
Failure to show objective economic evidence. For example, IP
Innovation, (E.D. Tex. 2010) and Cornell University, (N.D.N.Y.
2009).
Reliance on biased testimony of employees. Rolls-Royce, (E.D.
Va. 2011).
Reasons for Finding EMVR Does Apply:
“… unrebutted evidence that the invention … was integral to the
overall performance of” accused loudspeakers. Bose Corp. v.
JBL, Inc., (Fed. Cir. 2001).
Although EVMR not applied, Federal Circuit awarded damages
based on entire pharmaceutical formulation because the patent
covered the infringing product as a whole. AstraZeneca (Fed. Cir.
2015).
14
15 APPORTIONMENT METHODS
Methods Rejected by Courts:
Identifying hardware components that performed non-patented
features as well. Sprint Comm’ns v. Comcast, (D. Del. 2015);
Intelligent Verification, (E.D. Va. 2015)
Dividing a royalty rate by the number of patents asserted. Finjan v.
Blue Coat, (N.D. Cal. 2015).
Forward citation analysis (i.e. the number of times the patent is cited
as prior art by future patents). Id.
Use of word count in marketing materials. Omega Patents v. Calamp,
No., 6:13-cv-1950 (M.D. Fla. 2015)
Methods Accepted by Courts:
Using percentage of accused products’ source code attributable to
the patent. Finjan v. Blue Coat, (N.D. Cal. 2015).
Frequency of use of the patented feature. Id.
Using the totality of the features in the accused products. Id.
Identifying feature within "smallest saleable unit" to factor out
nonpatented features. Ultimatepointer, LLC v. Nintendo Co., Ltd.,
(W.D. Wash. 2014).
16 APPORTIONMENT METHODS
Will Method Be Accepted or Rejected?
Key question is whether evidence is tied to the
footprint of the patented invention
Speculative testimony disfavored
The opinion must factor out the non-patented
features and account for relative value added by
patented feature
17 TRENDS IN APPORTIONMENT
Use of surveys in connection with apportionment.
Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3D 1283 (Fed Cir. 2015) (“damages methodology was based on reliable principles and was sufficiently tied to the facts of the case.”).
Use of technical expert in the apportionment analysis.
Use of marketing experts in apportionment.
Excluding damages experts under Daubert or MILs
Multiple theories – look inconsistent?
Multiple experts – too expensive?
18 TRENDS IN APPORTIONMENT
Daubert Do-Over – Not Clear Going Forward
Dynetix v. Synopsys, (N. D. Cal. 2013) (Grewal excludes
damages report on eve of trial but gives plaintiff another
chance –court “loath to leave Dynetix stripped of any
damages expert testimony whatsoever.”).
Golden Bridge v. Apple, (N. D. Cal. 2014) (Grewal
excludes a second damages report and does not give
plaintiff third bite at the “apple”).
Oracle America v. Google (N.D. Cal. 2012) (Alsup rejects
report, gives another two chances)
Network Protection Sciences v. Fortinet (N.D. Cal. 2013)
(Alsup draws bright line at first report)
Without Damages Expert – Now What?
Federal Circuit has made it clear that Section 284
does not require expert testimony
19 LOST PROFITS – EMVR AND APPORTIONMENT
Uncertainty in Supreme Court and Federal Circuit Cases
Early Supreme Court cases seem to require apportionment. Seymour v. McCormick and Garretson.
Federal Circuit cases inconsistent:
Rite-Hite and King Instruments – no apportionment of LP
LaserDynamics and Ericsson -- apportionment required
LaserDynamics and Ericsson citing Garretson
“…the patentee … must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and the unpatented features,...”
Recent N.D. Cal Case Requires Apportionment
Good Tech. v. Mobileiron, (N.D. CA 2015)
Panduit factor 1 (“demand”): Is it demand for the patented product (e.g., Depuy Spine, 2009) or patented feature (e.g., Calico Brand, 2013)?
20 FRAND/ RAND ROYALTY DAMAGES
What is FRAND?
Fair refers to the underlying licensing terms, terms
that are competitive and legal in the marketplace.
Reasonable refers primarily to the licensing rate.
Non-Discriminatory refers to both the terms and
the rates in the agreement. The licensor must treat
each individual licensee the same in order to
maintain a level playing field and ensure new
products are able to enter the market on the same
footing.
21 FRAND/ RAND ROYALTY DAMAGES
Arises for Standard Essential Patents (SEPs)
where FRAND commitment made to SSOs
For Example, IEEE Bylaws, Sub-Section 6,
Patents:
“[a] statement that the Submitter will make available a
license for Essential Patent Claims to an unrestricted
number of Applicants on a worldwide basis without
compensation or under Reasonable Rates, with other
reasonable terms and conditions that are demonstrably
free of any unfair discrimination… .”
Issue: When an LoA fails to define a reasonable
rate, what is a reasonable and non-discriminatory
rate?
22 FRAND/ RAND ROYALTY DAMAGES
Problems Inherent in RAND Royalty Damages:
1. Patent Hold Up:
Patentee attempts to leverage status as an SEP to get
higher royalty
2. Stacking:
Many patents essential to standard
If each tried to collect it would surpass the value of the
product
3. Licensing Discrimination:
Discrimination on who gets a license
Discrimination on pricing
23 FRAND/ RAND ROYALTY DAMAGES
Concepts Involved in RAND Determinations:
1. Timing of Negotiation:
Typical hypothetical negotiation takes place after the standard is adopted (i.e., time of first infringement) –when users “locked in”
Negotiation prior to standardization-alternatives available
Value of standard must be removed. CSIRO (no RAND commitment) and Ericsson (Fed. Cir.); Microsoft v. Motorola, (W.D. Was. 2013); Fed. Cir. 2016 Model Jury Instruction No. 6.7
2. Identity of Terms Amongst Licensees:
No discrimination permitted
No requirement for identity of terms, but similarly situated parties should receive similar terms
Need to determine if patented feature extends beyond one sub-component
3. Use of Comparable Licenses: To be comparable, a license should include SEPs with RAND obligations. Microsoft, (W.D. Wash. 2013).
4. Assumptions Made In Negotiation:
Typical Negotiation assumes infringer evaluating what to pay versus using alternatives
RAND negotiation involves infringer stepping in the shoes of SSO to determine what technology to adopt
24 FRAND/ RAND ROYALTY DAMAGES
Three Noteworthy District Court Decisions:
1. Microsoft v. Motorola (W.D. Wash. 2013) (Hobart)
Modified GP Factors
Extracted out from the analysis the value of the standard
Relied heavily on patent pools-asserted patents little relative value
2. In re Innovatio IP Ventures (N.D. Ill.) (Holderman)
Relied heavily on Judge Hobart’s analysis
Some differences—asserted patents had moderate value
“Top Down” Approach—divide profit by SEP value
Federal Circuit in Ericsson:
Jury must be instructed on:
1. Specific RAND obligation;
2. Only GP factors relevant in RAND case;
3. Apportioned value of the patented technology apart from the value arising from standard; and
4. (a) patent hold-up and (b) royalty stacking if defendant can show evidence.
25 EXTRATERRITORIALITY
Carnegie Mellon Univ. v. Marvell, (Fed. Cir. 2015)
After $1.17B verdict, Federal Circuit aff’d damages except for chips
made/ delivered abroad and never imported into U.S.
Insufficient that the foreign activity be “factually caused, in the
ordinary sense, by domestic activity constituting infringement” and
remanded for determination of where sales occurred.
Remanded on open question of U.S. contracting for foreign
manufacturing.
Westerngeco v. Ion Geophysical, (Fed. Cir. 2015)
Damages could not be awarded in the U.S. resulting from lost
contracts for services performed abroad.
“the entirely extraterritorial production, use or sale of an invention
patented in the United States is an independent, intervening act that,
under almost all circumstances, cuts off the chain of causation
initiated by an act of domestic infringement.”
26 LIMITATIONS ON DAMAGES
1. Temporal Limitations on Damages
Six-year period of 35 U.S.C. §286 – damages available 6 years before Complaint
Equitable defenses may provide other limitations (e.g., laches, estoppel)
Possible pre-issuance damages under 35 U.S.C. §154(d)
2. Failure To Mark Products with Patent Number
Product or package, “Patent #” – does not apply to NPEs
Virtual marking – must still write “patent” on product with website
Pre-suit issue only, does not preclude post-suit damages
Licensees must mark – NPE issue
3. Actual Notice in Lieu of Marking
Identify three specific things: (1) asserted patent; (2) accused product; and (3) a charge of infringement
Query: Are these sufficient:
Oral notice?
Notice to customer/ distributor who then notifies manufacturer?
Form letter?
Patent application?
27 ENHANCEMENT OF DAMAGES POST-HALO
Overview
• Halo’s new standard for finding willfulness and awarding
enhanced damages.
• More awards of enhanced damages—or awards in
different types of cases—or both?
• New burden of proof and standard of appellate review.
• Impact on litigation strategy and settlement dynamics.
• Handling pending cases.
• Obtaining opinions of counsel, and whether to waive
privilege.
28 ENHANCEMENT OF DAMAGES POST-HALO
35 U.S.C. 284
Upon finding for the claimant the court shall award the claimant
damages adequate to compensate for the infringement, but in no
event less than a reasonable royalty for the use made of the invention
by the infringer, together with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess
them. In either event the court may increase the damages up to three times
the amount found or assessed. Increased damages under this
paragraph shall not apply to provisional rights under section 154(d).
The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.
29 BEFORE HALO – OBJECTIVE PRONG OF SEAGATE
CRITICAL
Many defendants sought, and courts granted, summary judgment on non-willfulness. Objective reasonableness prong particularly susceptible to summary judgment:
Butamax Advanced Biofuels LLC v. Gevo, Inc. (D. Del. Aug. 3, 2015) – “In the case at bar, Gevo asserted invalidity and non-infringement arguments for the '889 patent and Gevo's motion for summary judgment of the '889 patent is granted as to indefiniteness. With respect to the Donaldson patents, Gevo's invalidity and noninfringement arguments, at minimum, are credible and reasonable theories supported by expert testimony. Gevo's motion for summary judgment of no willful infringement is granted.”
Dane Techs., Inc. v. Gatekeeper Sys., Inc. (D. Minn. Sept. 29, 2015) – “Gatekeeper has presented several defenses to infringement that are objectively reasonable as a matter of law. Gatekeeper’s positions during claim construction, although not all were accepted, were objectively reasonable....
Finally, Gatekeeper conducted a due diligence investigation before purchasing DJ Products Inc.’s cart retriever product line. This included an infringement evaluation of the ’379 Patent. Rather than showing recklessness, Gatekeeper’s conduct evidences the opposite, that it engaged in a suitable investigation to determine whether or not its intended acquisition infringed Dane’s patent rights. Thus, Gatekeeper is entitled to summary judgment on Dane’s claim of willful infringement.”
30 SUPREME COURT WILLFULNESS STANDARD FROM
HALO
Supreme Court wrote approvingly of Seagate’s approach:
– “[R]eflects, in many respects, a sound recognition that enhanced damages are generally
appropriate under § 284 only in egregious cases”
But Seagate’s standard “unduly rigid” by requiring proof of objective recklessness in
every case.
Objectiveness Still Relevant: The Supreme Court’s decision in Kirtsaeng
interpreting Copyright Act’s attorneys’ fee provision may indicate strong
relevance.
Could have the effect of “exclud[ing] from discretionary punishment many of the most
culpable offenders, such as the ‘wanton and malicious pirate’ who intentionally
infringes another’s patent…”
KEY TAKEAWAY:
Awards of enhanced damages “are not to be meted out in a typical infringement case,
but are instead designed as a ‘punitive’ or ‘vindictive’ sanction for egregious
infringement behavior. The sort of conduct warranting enhanced damages has been
variously described in our cases as willful, wanton, malicious, bad-faith, deliberate,
consciously wrongful, flagrant, or—indeed—characteristic of a pirate.”
31 SUPREME COURT WILLFULNESS STANDARD FROM
HALO
IMPACT OF HALO:
Section 284’s text grants broad discretion to district courts, but
“through nearly two centuries of discretionary awards and review by appellate
tribunals, ‘the channel of discretion ha[s] narrowed,’ so that such damages are
generally reserved for egregious cases of culpable behavior.”
Enhanced damages “should not be” “awarded in garden-variety cases.”
The principles set forth in the Court’s opinion “channel the district court’s exercise
of discretion, limiting the award of enhanced damages to egregious cases of
misconduct beyond typical infringement.”
Note: because culpability is measured by reference to the “knowledge of the actor
at the time of the challenged conduct,” defenses developed after infringement do
not insulate conduct from an award of enhanced damages.
KEY: A district court is not obligated to award enhanced damages when it finds the
requisite “egregious misconduct.”: “[a]s with any exercise of discretion, courts
should continue to take into account the particular circumstances of each case in
deciding whether to award damages, and in what amount.”
32 STRATEGIC IMPLICATIONS OF HALO
Changed Strategy in Litigation?
In Which Court Will the Case Be Filed?
District Court Judge Will Play A Bigger Role
More deference on appeal
More discretion to refuse enhancement
Does it benefit you to have a sophisticated judge or a judge
who is new to patent issues?
33 STRATEGIC IMPLICATIONS OF HALO
Changed Strategy in Litigation?
Discovery of Email, Instant Messages, and Wikis
Cost balance has changed
More tough privilege questions
Do you get opinions of counsel?
More casual communications = more risk
34 STRATEGIC IMPLICATIONS OF HALO
Should Juries Even Be Involved in Making Decisions Regarding Egregiousness?
“[T]he Patent Act of 1836 confines the jury to the assessment of "actual damages. "The power to inflict vindictive or punitive damages is committed to the discretion and judgment of the court.” Seymour v. McCormick, 57 U.S. 480, 489-90 (1854)
Defendant arguments that a jury should not decide willfulness:
No separate claim for or assessment of willful infringement
35 U.S.C. § 284 reserves enhancement for the court
Halo adopted abuse of discretion standard on review which is for judicial decisions, not jury findings
35 U.S. §284 “confines the jury to the assessment of ‘actual damages’” citing Seymour v. McCormick, 57 U.S. (16 How.) 480 (1853)
35 OPINIONS OF COUNSEL
Opinions of Counsel Post-Halo
Potential Downside
Expensive
Potential mismatch with trial defenses
Waiver
Difficult cross-exams if case goes to trial
Potential Upside
Might tip balance on summary judgment
Could limit discovery
Need to have some plausible evidence if jury is going to
determine egregiousness
Might help on appeal
36 RECOVERY OF ATTORNEYS’ FEES
Octane Fitness v. Icon Health & Fitness
6 years of litigation and a United States Supreme
Court opinion all over a single word in a single
sentence …
The Court in exceptional cases may award
reasonable attorney fees to the prevailing party. 35
U.S.C. § 285
37 BROOKS FURNITURE TEST
Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc. (Fed. Cir.
2005)
Absent litigation misconduct or inequitable conduct before the
PTO, fees may be awarded only if the litigation is both (1)
brought subjective bad faith; and (2) objectively baseless
Sham litigation - Professional Real Estate Investors, Inc. v.
Columbia Pictures Industries, Inc. (US 1993)
Must be established by clear & convincing evidence
Presumption that patent litigation brought in good faith
38 THE SUPREME COURT’S REVERSAL IN
OCTANE FITNESS
The Court’s Unanimous Opinion Highlights Court’s Dislike of Bright line tests:
Rejection of Brooks test as unduly rigid, and impermissibly encumbering the flexible statutory grant of discretion to district courts
Analysis “begins and ends with the text of § 285” – Exceptional means uncommon, rare, not ordinary, unusual Query – where does “egregious” fit into this list? Is it now more difficult
to prove willfulness/enhancement under § 284 than exceptionality under § 285?
The Federal Circuit improperly imported the PRE exception to the Noerr-Pennington doctrine of antitrust law into § 285 – Fee shifting does not have same 1st Amendment concerns as antitrust liability. Sham litigation test is dead in
Brooks test renders § 285 superfluous in light of Court’s inherent power to award fees.
39 THE SUPREME COURT’S REVERSAL IN
OCTANE FITNESS
NEW STANDARD
“[A]n exceptional case is simply one that stands out
from others with respect to the substantive strength of
the party’s litigation position (considering both the
governing law and the facts of the case) or the
unreasonable manner in which the case was litigated.
District Courts may determine whether a case is
‘exceptional’ in a case-by-case exercise of their
discretion, considering the totality of the
circumstances.”
40 HIGH BURDEN TO PROVE EXCEPTIONALITY
Justices Address the Standard of Proof:
Nothing in § 285 justifies a clear and convincing standard of
proof
§ 285 is one simple discretionary inquiry governed by a
preponderance of the evidence standard
* Court did not directly address the Federal Circuit’s presumption
that patent infringement suits are brought in good faith, but that
seems to have stemmed from sham litigation.
41 STANDARD OF PROOF CHANGED
CASES Awarding Fees Under Octane Fitness:
Lumen View Tech., LLC v. Findthebest.com, Inc., No. 13 Civ 3599, 2014 WL 2440867 (S.D.N.Y. May 30, 2014) Awarding fees to accused infringer after concluding “no reasonable litigant could reasonably expect success on the merits”, motive to extract nuisance settlement, and absence of reasonable pre-suit investigation
Bianco v. Globus Medical, Inc., No. 2:12-cv-00147-WCB, 2014 WL 1904228 (E.D. Tex. May 12, 2014). Revisiting denial of fees under new Octane standard, but still denying fees after inquiring into whether claim was “objectively baseless” or brought in “subjective bad faith”
Cognex Corp. v. Microscam Sys. Inc., No. 13-CV-2027, 2014 WL 2989975 (S.D.N.Y. June 30, 2014) Applying Octane standard to fee motion by patentee after jury verdict of willful infringement, and finding case exceptional based on exceptionally weak defenses and unreasonable litigation tactics
Homeland Housewares, LLC v. Sorensen Research and Develop Trust, No. 2013-1537, 2014 WL 4400184 (Fed. Cir. Sept. 8, 2014). Finding D. Ct did not abuse discretion in awarding $253,777.37 in fees, where patentee failed to come forward with evidence of infringement at summary judgment stage.
LAWYER BIO 42
Blair M. Jacobs is a partner in the Intellectual Property practice at Paul Hastings
and is based in the firm’s Washington, D.C. office. He is an experienced first chair
trial lawyer who focuses his practice on patent, copyright, trademark, unfair
competition, antitrust, and other commercial litigation matters, both at the trial court
and appellate levels.
Blair M. Jacobs
Partner, Litigation Department
Washington, DC
T: 1(202) 551-1951
F: 1(202) 551-0451
LAWYER BIO 43
Charles J. Hawkins is of counsel in the Intellectual Property practice of Paul Hastings
and is based in the firm’s Washington, D.C. office. He focuses his practice on the litigation
of intellectual property disputes. Mr. Hawkins has been involved in litigation dealing with
utility patent, design patent, trademark, trade secret, trade dress infringement as well as
antitrust and unfair competition claims. He has handled matters at all stages of litigation,
including trials in district court, investigations involving allegations of unfair importation
at the United States International Trade Commission (ITC) and appeals to the United
States Court of Appeals for the Federal Circuit and the U.S. Supreme Court. He has
litigated intellectual property cases in federal courts in California, Delaware, Florida,
Illinois, New Jersey, New York, Ohio, Pennsylvania, Texas, and Virginia.
Charles J. Hawkins
Of Counsel, Litigation Department
Washington, DC
T: 1(202) 551-1955
F: 1(202) 551-0455
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San Diego, CA 92121
t: +1.858.458.3000
f: +1.858.458.3005
San Francisco
55 Second Street
Twenty-Fourth Floor
San Francisco, CA 94105
t: +1.415.856.7000
f: +1.415.856.7100
São Paulo
Rua Funchal, 418, 34º andar
Vila Olímpia
São Paulo - SP
Brazil
04551-060
Washington, D.C.
875 15th Street, N.W.
Washington, D.C. 20005
t: +1.202.551.1700
f: +1.202.551.1705
Beijing
26/F Yintai Center Office Tower
2 Jianguomenwai Avenue
Chaoyang District
Beijing 100022, PRC
t: +86.10.8567.5300
f: +86.10.8567.5400
Hong Kong
21-22/F Bank of China Tower
1 Garden Road
Central Hong Kong
t: +852.2867.1288
f: +852.2526.2119
Seoul
33/F West Tower
Mirae Asset Center1
26, Eulji-ro 5-gil, Jung-gu,
Seoul, 04539, Korea
t: +82.2.6321.3800
f: +82.2.6321.3900
Shanghai
43/F Jing An Kerry Center Tower II
1539 Nanjing West Road
Shanghai 200040, PRC
t: +86.21.6103.2900
f: +86.21.6103.2990
Tokyo
Ark Hills Sengokuyama Mori Tower
40th Floor, 1-9-10 Roppongi
Minato-ku, Tokyo 106-0032
Japan
t: +81.3.6229.6100
f: +81.3.6229.7100
Brussels
Avenue Louise 480-5B
1050 Brussels
Belgium
t: +32.2.641.7460
f: +32.2.641.7461
Frankfurt
Siesmayerstrasse 21
D-60323 Frankfurt am Main
Germany
t: +49.69.907485.0
f: +49.69.907485.499
London
Ten Bishops Square
Eighth Floor
London E1 6EG
United Kingdom
t: +44.20.3023.5100
f: +44.20.3023.5109
Milan
Via Rovello, 1
20121 Milano
Italy
t: +39.02.30414.000
f: +39.02.30414.005
Paris
96, boulevard Haussmann
75008 Paris
France
t: +33.1.42.99.04.50
f: +33.1.45.63.91.49
For further information, you may visit our home page at
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