Wednesday, June 17, 2020

Federal Circuit Reverses Award of Attorneys' Fees

The court issued a precedential opinion last week in Munchkin, Inc. v. Luv N' Care, Ltd., opinion  by Judge Chen, joined by Judges Dyk and Taranto.  The court holds that the district court abused its discretion by awarding attorneys' fees to the prevailing defendant in a trademark and patent infringement action, in the absence of specific facts demonstrating that the case was exceptional.  The facts are as follows.  The plaintiff filed a complaint alleging trademark infringement, then later was permitted by the court to file an amended complaint alleging trademark, trade dress, and patent infringement.  The court held a Markman hearing on the patent claim, and rejected the defendant's proposed claim construction under which the patent's validity would have been dubious in view of two prior art references.  The defendant also filed an IPR, however, and succeeded in having the PTAB invalidate the patent; the Federal Circuit summarily affirmed.  The plaintiff eventually voluntarily dismissed all of its claims in the district court action, and the defendant moved for an award of attorneys' fees.  The district court granted the motion, but the Federal Circuit now reverses, writing:  
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. Thermolife Int’l LLC v. GNC Corp., 922 F.3d 1347, 1356–57 (Fed. Cir. 2019). That fact alone, however, would not create a basis to deny a fee motion. . . . But when the bases of an attorney’s 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.” Id. In the present case, the merits of the patent, trademark, and trade dress claims were all freshly considered issues for the district court, presented in the context of a fee motion, but LNC failed to make the detailed, fact-based analysis of Munchkin’s litigating positions to establish they were wholly lacking in merit. The district court’s opinion granting a fee award likewise lacked adequate support (p.9).
On the patent infringement claim in particular, the court rejects the argument that the mere fact that the PTAB decided to institute an IPR is a sufficient basis for finding a case exceptional:
The district court’s decision awarding LNC its attorney’s fees never adequately explains why Munchkin’s validity position was unreasonable when the district court’s claim construction ruling favored Munchkin and erected a serious hurdle to LNC’s invalidity challenge. The district court attempted to sidestep this hurdle by dismissing its own Markman claim construction as merely a non-final, interim order. . . . But the possibility of reconsideration of the claim construction, whether by the district court or this court, is immaterial. The relevant question for purposes of assessing the strength of Munchkin’s validity position is not whether its proposed construction is correct; rather the relevant question is whether it is reasonable. . . .
The district court was also led astray by LNC’s argument that Munchkin was unreasonable in maintaining its patent infringement lawsuit once the Patent Board instituted the IPR on the ’993 patent, because (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. These IPR statistics combined with the merits outcome are not enough, for they tell us nothing about the “substantive strength of [Munchkin’s] litigating position (considering both the governing law and the facts of the case).” Octane Fitness, 572 U.S. at 554 (emphasis added). That Munchkin’s patent was ultimately held unpatentable does not alone translate to finding its defense of the patent unreasonable. SFA Sys., 793 F.3d at 1348. Nor are the merits outcomes of other patent owners’ IPR cases material, as those case outcomes are based on their own, different facts. The upshot of LNC’s statistics and outcome-based argument would be to subject every patent owner to paying a § 285 fee award in a patent suit anytime its patent is canceled in a co-pending IPR proceeding, without any consideration of the relative strength of the patent owner’s legal theories, claim construction arguments, or proffered evidence in defense of the patent. That form of short-cut thinking is wholly incompatible with Octane Fitness’s fact-dependent, “case-by-case” requirement, and we reject it. In this case, LNC cannot point to any statement by the Patent Board suggesting that it viewed Munchkin’s position to be frivolous or anything out of the ordinary, nor did it or the district court ever conduct that required substantive analysis to demonstrate that Munchkin’s defense was so meritless as to stand out from the norm. Moreover, that the Patent Board adopted LNC’s preferred claim construction does not automatically indicate that it was unreasonable for Munchkin to rely on the district court’s claim construction, given that the two proceedings applied different claim construction standards (pp. 10-12; emphases in original).

No comments:

Post a Comment