Blackbird Tech LLC v. Health in Motion LLC
944 F.3d 910
Fed. Cir.2019Background
- Blackbird Tech LLC sued Health In Motion LLC and Leisure Fitness Equipment LLC for infringement of U.S. Patent No. 6,705,976 (exercise equipment design) asserting at least claim 1 against HIM’s M1 Multi‑Gym.
- The case was transferred from D. Del. to C.D. Cal.; Blackbird made repeated, decreasing settlement offers (including a zero‑dollar license) that defendants declined.
- Defendants filed a fully briefed summary judgment motion asserting noninfringement; on the eve of trial Blackbird voluntarily dismissed with prejudice and executed a covenant not to sue.
- The district court found the case “exceptional” under 35 U.S.C. § 285 based on weak substantive claims and unreasonable litigation conduct, and awarded defendants $363,243.80 in fees and expenses.
- District court findings emphasized structural differences between the patent claims (housing with cables exiting from inside to outside and a common internal resistance) and the accused M1 device, document‑production delays, nuisance‑value settlement demands, and Blackbird’s pattern of many similar suits.
- The Federal Circuit affirmed, holding the district court did not abuse its discretion on exceptional‑case findings, deterrence, or the fee amount.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the case is "exceptional" under 35 U.S.C. § 285 based on the substantive strength of Blackbird’s position | Blackbird: claim construction and infringement positions were reasonable and likely correct | Defendants: claim elements materially differ from accused device; position was meritless | Court: Affirms exceptional — Blackbird’s infringement contentions were flawed and lacked substantive strength |
| Whether Blackbird’s litigation conduct (settlement demands, discovery delays, last‑minute dismissal) supports an exceptional finding | Blackbird: no required prior notice of weakness; conduct not sanctionable | Defendants: nuisance settlement offers, withheld documents, surprise dismissal were unreasonable | Court: Affirms — conduct was unreasonable and weighed toward exceptionality |
| Whether deterrence of future abusive litigation may be considered | Blackbird: deterrence improper or unsupported | Defendants: deterrence appropriate given pattern of suits (100+ filings) | Court: Affirms — deterrence is a permissible factor in § 285 analysis |
| Whether the awarded fee amount ($363,243.80) was reasonable and properly apportioned | Blackbird: court failed to assess hours reasonableness and awarded full litigation fees unrelated to specific misconduct | Defendants: detailed billing, extensive motions and discovery justify full award | Court: Affirms — district court reviewed lodestar factors, hours were reasonable given scope and misconduct justified full award |
Key Cases Cited
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (flexible, totality‑of‑circumstances standard for § 285 exceptional cases)
- Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014) (abuse‑of‑discretion standard for appellate review of § 285 rulings)
- Lumen View Tech. LLC v. Findthebest.com, Inc., 811 F.3d 479 (Fed. Cir. 2016) (pre‑suit diligence relevant to fee awards)
- Bayer CropScience AG v. Dow Agro‑Sciences LLC, 851 F.3d 1302 (Fed. Cir. 2017) (pre‑suit investigation may show suit was unwarranted)
- Eon‑Net LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011) (nuisance‑value settlement demands can indicate bad faith)
- Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd., 726 F.3d 1359 (Fed. Cir. 2013) (misconduct affecting all stages of litigation can justify full fee award)
- Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372 (Fed. Cir. 2017) (deterrence as a permissible consideration when weak claims and misconduct present)
- Stone Basket Innovations, LLC v. Cook Med. LLC, 892 F.3d 1175 (Fed. Cir. 2018) (notice considerations in awarding fees)
- Thermolife Int’l LLC v. GNC Corp., 922 F.3d 1347 (Fed. Cir. 2019) (lack of strict requirement for prior notice of weakness)
- Blum v. Stenson, 465 U.S. 886 (1984) (consideration of attorney skill, experience, and reputation in fee awards)
- Digeo, Inc. v. Audible, Inc., 505 F.3d 1362 (Fed. Cir. 2007) (Federal Circuit law governs § 285 analysis)
- Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs., Inc., 858 F.3d 1383 (Fed. Cir. 2017) (standards for appellate review of fee determinations)