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

blairjacobs@paulhastings.com

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

charleshawkins@paulhastings.com

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Twelfth Floor

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

www.paulhastings.com or email us at info@paulhastings.com

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