Successful patent-infringement defense nets $4.6 million court award for URC
Three and a half years after it accused Universal Remote Control, Inc. (URC), of infringing on four of its patents, Universal Electronics, Inc. (UEI) was ordered by a U.S. District Court for the Central District of California recently to recoup URC over $4.6 million in attorney’s fees and other costs.
UEI filed the patent infringement suit in March 2012, but a jury ultimately ruled in favor of URC and dismissed all claims. Further, an Inter Partes review proceeding of one of UEI’s patents in front of the Patent Trademark & Appeal Board found it invalid on grounds that a publication already existed in the public domain at the time of UEI’s application. The result: All four of UEI’s asserted patents were found to be either invalid, not infringed upon, unenforceable, and/or subject to no damages claims.
Based on the result of the litigation and other proceedings, URC asked the court the declare the case as “exceptional” under the patent law, a ruling that would allow the company, because of its successful defense, to request fees and costs against the accusing party. The court granted that request in March, and gave its ruling on the final amount last week. Attorney’s fees totaled more than $4.1 million and other expenses were values at $475,000, bringing the total award to $4.6 million.
According to the court’s September 4 Order, it said the fee award “is appropriate given the amount at stake, the complexity of the issues, and the fact that the resolution of certain issues reflected significant difficulties unnecessarily caused by Plaintiff [UEI].”
The Court further stated that it had previously “determined, for example, that ‘this litigation was at least in part motivated by Plaintiff’s desire for ‘payback’ for Defendant’s successful competition in the marketplace,’ that Plaintiff failed to adequately review its own material concerning marking before filing suit, that it engaged in discovery gamesmanship to obscure such failing, and that Plaintiff engaged in ‘troubling’ conduct concerning a petition for correction of inventorship.”