For our weekly SoCal IP Institute meeting on Monday, July 10, 2017, we will discuss the following cases:

Adjustacam LLC v. Sakar International Inc. (Fed. Cir.  July 5, 2017) (available here). AdjustaCam is the exclusive licensee to a patent claiming a camera “rotatably attached . . . about a first axis of rotation.” Newegg produced a camera that used a “ball-and-socket” attachment. After claim construction in the district court, it became obvious there was no infringement, and the case was voluntarily dismissed. Newegg moved to collect attorneys’ fees for exceptional cases under § 285 of the Patent Act. The lower court denied the fee award, but on appeal the court remanded the case holding a fee award is required. The decision was based upon (1) the new totality of the circumstances standard endorsed by Octane Fitness (2) the fact that AdjustaCam’s lawsuit “became baseless” after claim construction.

Nantkwest, Inc. v. Matal (Fed. Cir.  June 23, 2017) (available here). Plaintiff was denied a patent at the PTO and appealed to the United States District Court for the Eastern District of Virginia. 35 U.S.C. § 145 provides that the applicant appealing to the EDVA must pay “[a]ll of the expenses of the proceeding [. . . ] regardless of the outcome.” After winning in the district court, the director of the PTO moved to recover attorneys’ fees and expert witness fees. The district court awarded expert fees but denied attorneys’ fees citing the “American Rule” (both parties cover their own attorneys’ fees). On appeal the court found the word “expense” in the statute does include attorneys’ fees. Judge Stoll filed a dissenting opinion.