Posts Tagged: "35 U.S.C. § 285"

On appeal from the U.S. District Court for the District of Delaware, the U.S. Court of Appeals for the Federal Circuit (CAFC) held on April 21 that the district court erred in determining that DISH Network LLC and Sirius XM Radio Inc. (collectively, DISH and SXM) were not prevailing parties for purposes of collecting attorneys’ fees under 35 U.S.C. § 285. In particular, the CAFC held that the Appellant’s were prevailing parties before the district court based on a judgment of noninfringement, although later vacated, and a holding of invalidity before the USPTO Patent Trial and Appeal Board (the Board).

The Federal Circuit recently affirmed a district court’s award of attorney’s fees under 35 U.S.C. § 285. In particular, the Federal Circuit affirmed the lower court’s decision based on the plaintiff’s inadequate pre-suit investigation of infringement in the related cases. See Thermolife Int’l, LLC v. GNC Corp., Nos. 2018-1657, 2018-1666, 2019 U.S. App. LEXIS 13135 (Fed. Cir. May 1, 2019) (Before Taranto, Bryson, and Stoll, J.) (Opinion for the Court, Taranto, J). Leland Stanford Junior University (Stanford) and Thermolife International, LLC (Thermolife) are the owners and exclusive licensee, respectively, of U.S. Patent Nos. 5,891,459, 6,117,872, 6,646,006, and 7,452,916 directed to methods and compositions involving the amino acids arginine and lysine, to be ingested to enhance vascular function and physical performance. Thermolife, later joined by Stanford, brought suit alleging Hi-Tech, Vital, and multiple companies from the GNC family infringed the aforementioned patents. The parties agreed to bifurcate the proceedings: a consolidated trial on invalidity and enforceability would be held; and if necessary, separate proceedings on infringement would follow. The district court found the asserted claims of all four patents invalid as either being anticipated or obvious.