Honeywell International Inc. et al. v. Fujifilm Corp. et al.

Docket Nos. 2017-1070, -1073

January 11, 2018


Brief summary: DC decision denying attorneys’ fees affirmed since its “analysis demonstrated the totality-of-the-circumstances approach” and “losing a summary judgment motion should not automatically result in a finding of exceptional conduct”.

Summary: Fujifilm appealed the DC’s denial of attorney fees under § 285 which provides for the award of “reasonable attorney fees to the prevailing party” in “exceptional cases” (“one that ‘stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated’” (Octane Fitness, US 2014). The FC panel explained that it reviews a DC “decision on attorneys’ fees for an abuse of discretion, which is a highly deferential standard of review” (Highmark, US 2014; Bayer, FC 2017 (“a clear error of judgment in weighing relevant factors or in basing its decision on an error of law or on clearly erroneous factual findings”)). The DC found Honeywell’s asserted patent (US 5,280,371) invalid for violation of the on-sale bar under § 102 on SJ (“Honeywell I”), which the FC affirmed in “Honeywell II” (FC 2010), and Fuji then filed motions under § 285 based “on facts relating to the on-sale bar violation”, which were denied in “Honeywell III”, and Fuji appealed. While that appeal was pending, SCOTUS “changed the legal standard for attorneys’ fees under § 285” with Highmark and Octane, and the FC vacated and remanded Honeywell III for reconsideration in view of the new legal standard. Under that standard, the DC again denied attorneys’ fees. The FC panel found that the DC did not abuse its discretion in denying attorneys’ fees as its “analysis demonstrated the totality-of-the-circumstances approach, detailing the reasons why Honeywell’s positions on the merits and litigation tactics did not make this case case, in its judgment, exceptional”. The FC also agreed with the DC “that losing a summary judgment motion should not automatically result in a finding of exceptional conduct.” The DC decision denying attorneys’ fees was therefore affirmed.

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