Tag Archives: attorneys’ fees

Trademark and Patent Applicants Opting for a District Court Appeal Must Pay PTO’s Attorney Fees

On June 23, 2017, the Federal Circuit held that, whether they win or lose, patent applicants who appeal adverse PTAB decisions directly to a district court must pay the PTO’s attorneys’ fees.

Patent applicants seeking judicial review of Board decisions have two options under the America Invents Act: appeal to the Federal Circuit under 35 U.S.C. § 141, or to the Eastern District of Virginia under 35 U.S.C. § 145.  Appeals taken under Section 145 offer certain benefits to the applicant, such as allowing discovery and the introduction of further evidence.  Section 145 also provides that applicants must pay “[a]ll the expenses of the proceeding.”  When Dr. Hans Klingemann’s patent application directed to a method of treating cancer was rejected as obvious, Nantkwest, the assignee of the application, appealed under Section 145.  After prevailing on the merits, the Director of the PTO moved for expert and attorneys’ fees, citing the “all expenses” provision of the statute. Continue reading

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Request for Fees and Costs by Haiti Earthquake Photojournalist Denied by SDNY

Despite receiving a 1.2 million dollar verdict in a copyright infringement suit involving photos taken after the 2010 Haiti earthquake, additional requests by the prevailing-litigant photographer have not fared as well. The District Court for the Southern District of New York has denied photographer Daniel Morel’s request that Agence France Presse (“AFP”) and Getty Images, the counterclaim defendants, pay his costs and attorneys’ fees. The court also fixed the sum of the lien charged by Morel’s former counsel. See Agence France Presse v. Morel, No. 10-cv-2730 (AJN) (S.D.N.Y. Mar. 23, 2015). Continue reading

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The Northern District of California Denies Fitbit Its Attorneys’ Fees Despite Fitbug’s Baseless Disgorgement Theory

On June 5, 2015, the Northern District of California denied Fitbit, Inc.’s motion for attorneys’ fees and costs against plaintiff Fitbug Ltd. Both parties make and sell portable electronic fitness tracking devices, and Fitbug had alleged that Fitbit’s marketing and sale of similar devices under a similar name and logo infringed Fitbug’s trademarks. However, this past January, the court granted Fitbit’s motion for summary judgment, finding that Fitbug’s trademark infringement claims were barred by laches. Fitbit subsequently moved for its attorneys’ fees under 15 U.S.C.§ 1117(a), which authorizes fee-shifting in “exceptional cases.”

The court recognized the applicability to Section 1117(a) of the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., which outlines the standard for finding a case “exceptional” in patent cases. Under that standard, if a case stands out from others with respect to either (1) “the substantive strength of a party’s litigating position,” or (2) “the unreasonable manner in which the case was litigated,” a prevailing party’s attorneys’ fees may be awarded. Fitbit asserted that this case was exceptional under both prongs. First, Fitbit argued that Fitbug’s litigating position was weak because it knew or should have known that laches barred its claims prior to filing suit, and Fitbug had no factual or legal basis to argue against Fitbit’s laches defense. Second, Fitbit argued that Fitbug pursued its claims unreasonably by seeking legally and factually unsupported damages theories. Reviewing the totality of the circumstances, the court disagreed that the case was exceptional.

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