Honeywell International Inc. v. Fujifilm Corporation
708 F. App'x 682
| Fed. Cir. | 2018Background
- Honeywell sued Fujifilm, Fujifilm USA, Samsung SDI America, and Samsung SDI Co. Ltd. for infringement of U.S. Patent No. 5,280,371.
- The district court granted summary judgment that Honeywell’s patent was invalid under the on-sale bar (35 U.S.C. § 102); the Federal Circuit affirmed that judgment.
- After prevailing, defendants moved under 35 U.S.C. § 285 for an award of attorney fees; the district court denied those motions.
- The Supreme Court decisions in Octane Fitness and Highmark changed the standard for awarding fees under § 285 while the appeal was pending; the Federal Circuit vacated and remanded for reconsideration under the new standard.
- On remand the district court reapplied the Octane/Highmark totality-of-the-circumstances test and again denied fees; defendants appealed that denial to the Federal Circuit.
- The Federal Circuit affirmed, holding the district court did not abuse its discretion in concluding the case was not "exceptional" under § 285.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether this case is "exceptional" under 35 U.S.C. § 285 | Honeywell argued its litigation conduct and positions were reasonable | Defendants argued Honeywell’s on-sale theory and litigation were sufficiently weak and unreasonable to make the case exceptional | Court held the district court did not abuse its discretion in finding the case not exceptional |
| Proper standard for awarding fees under § 285 | Honeywell relied on prior law before Octane/Highmark | Defendants relied on Octane/Highmark — totality-of-the-circumstances, preponderance of evidence standard | Court applied Octane/Highmark and found district court used correct legal test |
| Deference standard of review for fee determinations | Honeywell urged deference to district court findings | Defendants urged reversal based on alleged clear errors in the district court’s factual and legal reasoning | Court reiterated abuse-of-discretion review and found no clear error |
| Whether losing summary judgment alone supports fee award | Honeywell contended losing SJ is not exceptional | Defendants argued summary judgment loss on on-sale bar showed weakness warranting fees | Court agreed losing SJ alone is insufficient and affirmed denial of fees |
Key Cases Cited
- Octane Fitness v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (adopted totality-of-the-circumstances test for exceptional cases under § 285)
- Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014) (held appellate review of § 285 determinations is for abuse of discretion)
- Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302 (Fed. Cir. 2017) (discusses abuse-of-discretion standard in fee awards)
- Honeywell Int’l Inc. v. Nikon Corp., 672 F. Supp. 2d 638 (D. Del. 2009) (district court decision holding patent invalid under on-sale bar)