{"id":1585,"date":"2017-06-06T10:08:11","date_gmt":"2017-06-06T14:08:11","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1585"},"modified":"2017-06-06T10:08:11","modified_gmt":"2017-06-06T14:08:11","slug":"motivation-to-enforce-patent-rights-does-not-make-case-exceptional","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1585","title":{"rendered":"Motivation to Enforce Patent Rights Does Not Make Case Exceptional"},"content":{"rendered":"

Checkpoint Systems, Inc. v, All-Tag Security S.A.<\/a>, [2016-1397] (June 5, 2017), the Federal Circuit reversed the award of attorneys fees.<\/p>\n

Checkpoint sued under\u00a0U.S. Patent No. 4,876,555 relates\u00a0to improved anti-theft tags that are attached to merchandise. \u00a0After a jury trial, the patent was found\u00a0not infringed,\u00a0invalid, and unenforceable, and the court found the case to be “exceptional” because \u00a0\u00a0Checkpoint\u2019s expert witness based his infringement\u00a0opinion on examination of imported tags that were\u00a0manufactured by All\u2013Tag in Switzerland, although the
\naccused tags were manufactured by All\u2013Tag in Belgium. \u00a0The Federal Circuit reversed the attorney fee award because there was evidence that the Swiss products were made on the same machines and the Belgian products. \u00a0Certiorari was granted, and the case was remanded for further proceedings consistent with Octane Fitness<\/em> and Highmark<\/em>. \u00a0The\u00a0district\u00a0court agreed that Checkpoint\u2019s claims were not frivolous, but nonetheless found the case to be exceptional,\u00a0explaining: frivolousness is not required to find exceptionality\u00a0under Section 285. \u00a0The district court’s determination was based upon three findings:\u00a0(1)\u00a0Checkpoint\u2019s motivation in\u00a0bringing the lawsuit, (2) inadequate pre-suit investigation,\u00a0and (3) the failure of Checkpoint\u2019s expert to inspect the\u00a0correct accused product.<\/p>\n

As the Checkpoints motivation, the Federal Circuit said that enforcement of the statutory right to exclude is not an “exceptional case” under\u00a0\u00a7285. \u00a0While the Federal Circuit agreed that \u201cmotivation\u201d to harass or\u00a0burden an opponent may be relevant to an \u201cexceptional
\ncase\u201d finding, “motivation to\u00a0implement the statutory patent right by bringing suit\u00a0based on a reasonable belief in infringement is not an
\nimproper motive.” \u00a0The Federal Circuit found no evidence of\u00a0harassment or abuse, and noted that Checkpoint’s claim survived summary judgment and a Daubert<\/em> hearing.<\/p>\n

The district court also found the expert\u2019s failure to\u00a0test an accused product supported the exceptional case\u00a0finding and fee award. \u00a0The Federal Circuit noted that there no representation by All\u2013Tag that the accused\u00a0products were different from the tested products,\u00a0and the district court did not so find. \u00a0Thus the failure to test the accused products did \u00a0not support an exceptional case ruling.<\/p>\n","protected":false},"excerpt":{"rendered":"

Checkpoint Systems, Inc. v, All-Tag Security S.A., [2016-1397] (June 5, 2017), the Federal Circuit reversed the award of attorneys fees. Checkpoint sued under\u00a0U.S. Patent No. 4,876,555 relates\u00a0to improved anti-theft tags that are attached to merchandise. \u00a0After a jury trial, the … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[44],"tags":[],"class_list":["post-1585","post","type-post","status-publish","format-standard","hentry","category-attorneys-fees"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1585","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1585"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1585\/revisions"}],"predecessor-version":[{"id":1586,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1585\/revisions\/1586"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1585"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1585"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1585"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}