LAW360
By Nadia Dreid
Law360 (March 17, 2020, 9:19 PM EDT) — A patent licensing company founded by former WilmerHale and Kirkland & Ellis LLP partners is beseeching the U.S. Supreme Court to hear its appeal of attorney fees it was slapped with after a failed patent suit, saying that the award “sanctioned a dangerous expansion” of high court precedent.
Blackbird Tech said in its petition for certiorari on Monday that the Federal Circuit misapplied the justices’ Octane Fitness decision when it agreed with a lower court that the patent licensing company was responsible for $363,000 in attorney fees for filing a frivolous patent suit.
In deciding that Blackbird Tech’s suit was exceptional — a necessary qualifier for saddling one party with its opponents’ attorney fees — the Federal Circuit relied on “extraneous facts” like the number of lawsuits the company had already filed, according to the filing.
“The Federal Circuit and district court’s reliance on these extraneous facts is particularly troubling since neither court ever evaluated any of those prior cases filed by petitioner and simply relied on the arbitrary number of cases that were filed,” Blackbird Tech said. “The Federal Circuit, therefore, has sanctioned a dangerous expansion of [the law].”
The Supreme Court’s 2014 Octane Fitness ruling loosened the standards that courts had to meet in order to find a patent case exceptional, and, as a result, slap one party with the total attorney costs.
But when the California district court, and then the Federal Circuit, deemed Blackbird Tech’s suit frivolous based on the number of cases the patent licensing company had filed in the past, they “erroneously broadened the scope” of the Octane decision, the company said.
Blackbird Tech was ordered to pay Health In Motion’s attorney costs after suing the fitness equipment company over a home gym machine that the company claimed infringed one of its patents. Blackbird Tech later dropped the suit, but Health In Motion petitioned the court for the reimbursement of its costs and won.
The Federal Circuit upheld that decision, saying the district court was within its rights to find the case exceptional and that Blackbird Tech had “litigated the case in an unreasonable manner.”
Representatives for the parties did not immediately return a request for comment.
Blackbird Tech is represented in-house by Wendy H. Verlander and Jeffrey D. Ahdoot and Thomas M. Dunlap of Dunlap Bennett & Ludwig.
Counsel information for Health In Motion was not immediately available.
The suit is Blackbird Tech LLC, dba Blackbird Technologies, Petitioner v. Health in Motion LLC, dba Inspire Fitness, et al., case number 19-1132 in the U.S. Supreme Court.
–Editing by Nicole Bleier.