An interesting case from the Federal Circuit today. What’s unusual is that the Federal Circuit actually upheld a finding of design patent infringement. What’s more unusual is that the court upheld a monetary award in favor of the design patent owner. While I haven’t checked this rigorously, (and I’m sure someone will let me know if I’m wrong) it’s the first time in my recent memory they have done so. Let’s hope it signals a trend.

The case is instructive for several reasons.

I’m pleased that that the Federal Circuit did not go out of its way to find the design patent invalid and/or not infringed. They’ve been very inclined to do that in recent design patent cases and I’ve always found their reasoning to be less than compelling — almost as if they wanted to rule against the design patentee and then reasoned backwards from there. Maybe this signals a change. Or maybe I’ve just been too cynical in my views. Anyway, I’m happy to see a change.

The other thing I like about the case is that the design patent owner managed to avoid a formal “construction” of his design patent claim during pre-trial proceedings. I’ve always thought it is silly to “construe” a design patent claim and believe that any attempt to do so invariably favors defendants more than plaintiff’s. Here, because there was no formal “construction,” the design patent owner was able to avoid several arguments raised by the defendant on appeal. That was good lawyering on his counsel’s part. In any event, this case should belie the common fallacy that it is “necessary” for the lower court to do a full Markman construction of a design patent claim before sending a case to the jury.

The court also touched on some of the traps for the unwary that exist under Rule 50. I have a particular fondness for this after almost learning the hard way several years ago what can go wrong. Rule 50(a) is a bit tricky in that it states that a motion for judgment as a matter of law “may be made at any time before submission of the case to the jury.” Turns out, many jurisdictions require that the motion be made (or “renewed”) at the very end of evidence for both sides, not merely at the end of the opponent’s case. Furthermore, if you intend to challenge the sufficiency of evidence, you had better make your arguments in a Rule 50 motion at the end of evidence and before the case goes to trial. The Federal Circuit provides some reminders to this effect in its decision.

Finally, what’s refreshing about this case is that the plaintiff’s counsel delivered a favorable $813,550 judgment while racking up only $160,000 in fees. Given that some mega-firms rack up that much per month in pre-trial shenanigans alone, this is a good example of what can be done when competent counsel keep their eyes on the ball and avoid the side issues so distressingly present in modern patent litigation. Again, my hat’s off to them.

What’s truly an injustice, however, is that while the District Court awarded the plaintiff $250,000 in attorney’s fees, the Federal Circuit vacated and remanded that aspect of the judgment. Apparently they wondered why and how the District Court came up with $250,000 if actual fees were only $160,000. While this is, admittedly, a reasonable question, it does remind us that “no good deed goes unpunished.” Here the plaintiff’s lawyers did an effective and efficient job at very reasonable fees. So who ultimately benefits? The lousy, no good infringers! Again, while I can understand and even accept the Court’s logic in vacating and remanding the fee award, something inside me still screams it’s just not fair!

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Photo of Philip P. Mann Philip P. Mann

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to…

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to the court (a judge) as well as before juries. In addition to trial court work, Mann has performed appellate work before the United States Court of Appeals for the Federal Circuit.
Mann began his legal career in Chicago and Milwaukee before heading to Seattle where some of America’s most innovative companies were developing new technologies at breakneck speed. Before founding his own firm, he was a member of the Seattle Intellectual Property Law Firm, Christensen O’Connor Johnson Kindness.
Mann is an “AV” rated lawyer by Martindale Hubbell, indicative that he has reached the height of professional excellence and is recognized for the highest levels of skill and integrity.
He holds a degree in Electrical Engineering from the University of Illinois (Urbana) and received his law degree from the Washington University School of Law in St. Louis, Missouri. He is admitted to practice in the States of Illinois and Washington, as well as before the United States Patent and Trademark Office, and in various courts around the country.