Background

• Checkpoint sued All-Tag for infringement of the ’555 patent; the jury found no infringement, the patent invalid, and unenforceable; the district court entered judgment and awarded Checkpoint’s opponent about $6.6 million in fees, which Checkpoint appeals.
• The patented resonance tag comprises a dielectric layer between two conducting layers forming an oscillating circuit, with a throughhole in the dielectric to enable deactivation by shorting the circuit.
• Checkpoint’s infringement theory focused on whether All-Tag’s tags contain the throughhole; Checkpoint’s expert tested Swiss-made tags, not the Belgian accused products, raising concerns about representativeness.
• All-Tag moved to exclude the expert; the district court allowed testimony; All-Tag admitted that its products were made generally in accordance with its patents, and its own expert did not test the accused tags.
• The jury found no infringement and no invalidity; the district court later awarded attorney fees under §285 as an exceptional case; Checkpoint challenges this award on appeal.

Issues

Key Cases Cited

• Fleischmann Distilling Corp. v. Maier Brewing Co., 386 U.S. 714 (1967) (American Rule and cost-shifting rationale)
• Alyeska Pipeline Serv. Co. v. Wilderness Soc’y, 421 U.S. 240 (1975) (limits on fee-shifting to exceptional cases)
• Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300 (Fed. Cir. 2012) (objective baselessness and subjective bad faith required for §285)
• Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Cir. 2009) (reliance on general admissions not automatically baseless)
• Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338 (Fed. Cir. 2000) (pre-trial infringement admissions binding unless withdrawn)
• Dominant Semiconductors Sdn. Bhd. v. OSRAM GmbH, 524 F.3d 1260 (Fed. Cir. 2008) (objective baselessness and two-part test for §285)
• L & W, Inc. v. Shertech, Inc., 471 F.3d 1311 (Fed. Cir. 2006) (infringement based on patent claims with multiple embodiments)