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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1035.OPINION.8-23-2024_2372558.pdf">Realtime Adaptive Streaming LLC v. Sling TV, LLC, No. 2023-1035 (August 23, 2024)</a>, reversing an award of attorneys’ fees.

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The district&nbsp; court in the District of Colorado had awarded attorneys’ fees to defendants based on six purported “red flags” the district court found should have served as warning signs to Realtime that its case was fundamentally flawed and rendered the case exceptional.&nbsp;

Realtime had filed suit in 2017, asserting infringement of three patents related to digital data compression. In late 2018, however, two courts – the Central District of California and District of Delaware – found one of Realtime’s asserted patents (the ’535 patent) invalid under 35 U.S.C. § 101. The Colorado district court considered these invalidity findings to be the first red flag. In 2020, the Federal Circuit issued an opinion in Adaptive Streaming Inc. v. Netflix, affirming a finding of patent-ineligibility for certain claims related to digital video processing. The district court found this to be the second red flag. The third red flag was a decision by the Patent Trial and Appeal Board finding the claims of the ’535 patent invalid as obvious and the fourth was the issuance of a final rejection in the ex parte reexamination of another patent asserted by Realtime (the ’610 patent). The fifth red flag was a letter from one of the defendants to Realtime asserting that the ’610 patent was invalid and the sixth was a declaration by defendants’ expert witness submitted in support of defendants’ summary judgment motion. Realtime appealed.

The Federal Circuit reversed and remanded. Reviewing the district court’s award of attorneys’ fees under the “abuse of discretion” standard, Court held the district court should not have given any weight to some of the red flags it identified. First, the Court held its opinion in Adaptive Streaming was entitled to no weight because that case involved different technology. Second, the Court held the district court failed to adequately explain the relevance of the PTAB’s invalidation of the ’535 patent claims and the final rejection of the ’610 patent claims during reexamination. Third, the Court held the letter was insufficiently detailed to provide notice to Realtime that its asserted claims were patent-ineligible and the district court failed to explain why the defendants’ expert’s declaration should be considered a red flag.

CAFC Reverses Award of Attorneys’ Fees in Patent Case

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