Motion for Attorneys' Fees and Expenses Granted Against Non-practicing Entity: SDNY | Practical Law

Motion for Attorneys' Fees and Expenses Granted Against Non-practicing Entity: SDNY | Practical Law

In Lumen View Technology, LLC v. Findthebest.com, Inc., the US District Court for the Southern District of New York granted the accused infringer's motion for attorneys' fees and expenses in a patent infringement suit brought by a non-practicing entity, finding that it was a "prototypical" exceptional case under 35 U.S.C. § 285.

Motion for Attorneys' Fees and Expenses Granted Against Non-practicing Entity: SDNY

Practical Law Legal Update 1-570-0128 (Approx. 4 pages)

Motion for Attorneys' Fees and Expenses Granted Against Non-practicing Entity: SDNY

by Practical Law Intellectual Property & Technology
Published on 02 Jun 2014 • USA (National/Federal)
In Lumen View Technology, LLC v. Findthebest.com, Inc., the US District Court for the Southern District of New York granted the accused infringer's motion for attorneys' fees and expenses in a patent infringement suit brought by a non-practicing entity, finding that it was a "prototypical" exceptional case under 35 U.S.C. § 285.
On May 30, 2014, in Lumen View Technology, LLC v. Findthebest.com, Inc., the US District Court for the Southern District of New York granted Findthebest.com's (FTB) motion to declare a patent infringement case brought by a non-practicing entity exceptional under 35 U.S.C. § 285 (13 Civ. 3599 (DLC), (S.D.N.Y. May 19, 2014)).
On May 29, 2013, Lumen View Technology (Lumen) filed a complaint alleging that FTB infringed US Patent No. 8,069,073 ('073 patent). Lumen is a non-practicing entity and filed at least 20 similar patent infringement complaints against other companies. Lumen's '073 patent covers a computerized matchmaking method using preference data from two or more parties. After the case was filed, FTB explained to Lumen that the accused website does not infringe because it only matches using input data from one party. Even though it could not identify any feature of FTB's website that matches using input from two or more parties, Lumen maintained the lawsuit and demanded that FTB take a license. On November 22, 2013, the district court dismissed the case because the '073 patent fails to claim patentable subject matter under 35 U.S.C. § 101 (13 Civ. 3599 (DLC), (S.D.N.Y. Nov. 22, 2013)).
FTB then moved for a declaration that the case was exceptional under 35 U.S.C. § 285. The district court evaluated the motion using the Supreme Court's totality of the circumstances standard in Octane Fitness, LLC v. ICON Health & Fitness, Inc. and considered:
  • The frivolousness and objective reasonableness of Lumen's claims.
  • Lumen's motivation in bringing the suit.
  • The need to deter similar conduct in the future.
(134 S. Ct. 1749 (2014).)
The district court found that the case was exceptional because:
  • Lumen's infringement claim was objectively unreasonable because the accused website only used preference data from one user to make a match, while the '073 patent claims require the use of preferences from at least two persons. Facts showing no infringement were available to Lumen before the lawsuit's filing and specifically identified to Lumen shortly after the case was filed.
  • Lumen maintained the suit to extract a nuisance settlement and it:
    • sued several other parties for infringement; and
    • offered FTB a one-day-only (blue light) settlement special.
  • There is a need to deter Lumen's behavior because it is part of a predatory strategy aimed to gain financial advantage from the unwillingness of a defendant to engage in litigation, even against a frivolous patent infringement claim.