Shum v. Intel Corp.
629 F.3d 1360
| Fed. Cir. | 2010Background
- Shum sought correction of inventorship for seven patents originally issued to Verdiell.
- Radiance Design dissolved; a Plan of Liquidation gave equal rights to exploit resulting IP to Shum and Verdiell.
- LightLogic acquired by Intel for $409 million, bringing the patents under Intel’s ownership.
- District court dismissed several state-law claims, permitted others to proceed, and later entered JMOL adverse to Shum on some claims.
- Jury found Shum co-inventor on five patents; judgment entered for Shum on those five and for defendants on remaining claims; costs apportioned with net amount against Shum.
- On appeal, Shum challenges the cost award as improper in a mixed-judgment case; this court affirms the district court’s costs order, holding defendants prevail.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rule 54(d)(1) allows more than one prevailing party. | Shum: both sides prevailed. | District court: only one prevailing party. | Only one prevailing party; defendants prevail. |
| Whether Shum’s co-inventor victory qualifies as prevailing. | Shum obtained relief on inventorship. | Relief was insufficient to alter the legal relationship. | Co-inventor victory not sufficient to be prevailing. |
| Whether the district court properly awarded costs given the mixed outcomes. | Costs should reflect Shum’s partial win. | Costs properly allocated to reflect relative success. | No abuse; costs awarded to prevailing party with apportionment. |
| Whether Ninth Circuit standard for reasonableness was properly applied. | District court erred in cost calculation. | Court’s discretion properly exercised. | Reasonableness review deferential; no abuse. |
Key Cases Cited
- Farrar v. Hobby, 506 U.S. 103 (Supreme Court, 1992) (prevailing party where relief on merits alters the relationship)
- Manildra Milling Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178 (Fed.Cir.1996) (declaration can confer prevailing-party status absent damages)
- Inland Steel Co. v. LTV Steel Co., 364 F.3d 1318 (Fed.Cir.2004) (determines prevailing party when relief alters relationship with res judicata effect)
- Singer v. Office of Senate Sergeant at Arms, 173 F.3d 837 (Fed.Cir.1999) (recognizes need for material benefit to prevail)
- Ruiz v. A.B. Chance Co., 234 F.3d 654 (Fed.Cir.2000) (no-costs when neither side fully prevails beyond nominal relief)
- Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V., 464 F.3d 1339 (Fed.Cir.2006) (apportioned costs limited to great disproportion)
- Beckon Theatres v. Westover, 359 U.S. 500 (Supreme Court, 1959) (illustrative of mixed-judgment considerations (contextual reference))