Our weekly SoCal IP Institute meeting on Monday, April 20, 2015 will be a discussion of the following cases:

Oplus Tech, Ltd. v. Vizio, Inc. et al. (Fed. Cir. April 10, 2015) (available here, district court opinion available here). This is an appeal to the Federal Circuit from the Central District of California in which the district court found that there was substantial litigation misconduct, but decided not to award attorneys’ fees as an exceptional case.  In particular, the district court found that improper litigation tactics were used, that counsel for Oplus repeatedly mischaracterized evidence, presented inadequate infringement contentions, refused to sign a protective order to enable production of confidential documents, presented different experts for each motion when prior experts were discredited, and, in general, that Oplus and its counsel were vexatious.  The district court found the case exceptional under 35 U.S.C. Section 285.  Nonetheless, the district court denied Vizio’s request for attorneys’ fees indicating, in part, that there was no evidence that the case called for “significantly more attorney time and expert fees” than would have been incurred otherwise.

On appeal, the Federal Circuit found that the district court’s reasoning in not awarding attorneys’ fees (and expert fees) after an exceptional case finding in these circumstances, while within the court’s discretion, must be adequately described on the record.  Accordingly, the Federal Circuit vacated the decision and remanded. The Fed. Cir. asked for a more clear indication of the reasoning behind the decision not to award any fees and reconsideration of whether fees are merited.  The Federal Circuit emphasized the recent Supreme Court decision on Section 285.

Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc. et al., (2d Cir. February 25, 2015)  (available here). Plaintiff Marcel appealed the judgment in favor of Defendants Lucky Brand Dungarees.  Marcel’s suit sought damages and injunctive relief based on claims of trademark infringement, false designation of origin, and unfair competition , as well as common law trademark infringement and unfair competition. The district court granted Lucky Brand’s motion for summary judgment and denied leave to replead on the ground that the action was barred by res judicata because Marcel had previously sued on virtually the same issues, and won, against Lucky.

The 2nd Circuit found that the prior judgment in Marcel’s favor awarding damages and an injunction did not bar Marcel from instituting a second suit seeking relief for alleged further infringements that occurred subsequent to the earlier judgment. The 2nd Circuit vacated the grant of summary judgment and the denial of leave to amend the complaint. The district court also denied Marcel’s motion to hold Lucky in contempt for violation of an injunction in the prior litigation. The 2nd Circuit affirmed, finding that Marcel did not show that Lucky’s conduct violated the terms of the injunction.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 20, 2015 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.