Exceptional Case award – 35 USC 285

More Thumbtacks on the “Exceptional Case” Map Board

msmithExceptional Case award - 35 USC 285, Judge J. Rodney Gilstrap, Marshall

One of the lasting effects of Prime Minister Winston Churchill’s lengthy stay at the White House in December of 1941 was President Roosevelt ordering a replica of his “map room” to be created in what had been the billiards room just steps from his elevator and his doctor’s office on the ground floor of the mansion. In memory of its use, for many years the last situation map prepared for President Roosevelt on April 3, 1945 hung over the mantel in this room. But FDR’s interest in precisely where his nation’s units were may pale in comparison to patent lawyers’ interest in reading the latest determinations of whether certain conduct gets a thumb tack for “exceptional” for purposes of an award of attorneys’ fees under 35 U.S.C. §285.

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“Flagrant” – enhanced damages, exceptional case status & injunctions

msmithEnhanced Damages - 35 USC 284, Exceptional Case award - 35 USC 285, Injunctive Relief, Judge Robert W. Schroeder III, Tyler

I have posted many times on the Tinnus v. Telebrands litigation, which involves water balloon patents. Another order is now out, this time involving postverdict motions including recovery of enhanced damages and attorneys fees for “exceptional” case status, as well as and entry of a permanent injunction. It is one readers will want to study, as it contains some actions that are extraordinary – even by patent litigation standards. When a court’s order uses the term “flagrantly” multiple times, you know things are about to get very interesting. There is much to be learned here, so let’s begin …

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N.D. Cal. on Joining Owners in Section 285 Proceedings

msmithCommentary, Exceptional Case award - 35 USC 285

It was not quite two years ago when Judge Gilstrap ordered the nonparty owner of an unsuccessful patent plaintiff made a party for purposes of a motion for attorneys fees under Section 285 in Iris Connex.  That proceeding eventually generated an unappealed-from order making the owner jointly and severally liable for over $500,000, which I posted on here.

Hat tip to Rachael Lamkin for noting a recent similar decision from the Northern District of California, which is worth some analysis.

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VirnetX – JMOL, MNT, enhanced damages & attorneys fees rulings

msmithEnhanced Damages - 35 USC 284, Exceptional Case award - 35 USC 285, JMOL rulings, Judge Robert W. Schroeder III, Tyler

A trip to the West Coast for a mediation kept me from posting this earlier, but Judge Schroeder’s unredacted opinion in the VirnetX case resolving the postverdict motions is now out, and provides the latest analysis on many issues of interest to practitioners, including most notably enhanced damages, as none were awarded.

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The Irises are Blooming in California

msmithExceptional Case award - 35 USC 285

Interesting order out of the Northern District of California Monday. The district court granted summary judgment, and then granted defendant’s motion to join plaintiff’s founder/inventor as a necessary party and pursue attorney fees against him under 35 U.S.C. § 285. Noting that the plaintiff did not appear to have assets from which an award could be paid, the Court found that “[g]iven [the founder’s] controlling shareholder power and his status as the only person from [plaintiff] who is involved in this litigation, the Court finds that [his] activities may potentially subject him to liability for attorneys’ fees and that he should be joined in this action.” The cites to Iris Connex begin on page 14, and build to a climax around page 20.  Unlike that case, the only issue presented here was whether the third party should be joined, and not whether he was liable, if so, whether he should be held jointly and severally liable with the plaintiff, and what the amount of fees should be.  Those issues are yet to be briefed. cand-5-15-cv-01238-442

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