Bobcar Media, LLC v. Aardvark Event Logistics, Inc.

Background

Bobcar asserted patent-infringement, trade-dress-infringement, and unfair-competition claims against Aardvark. The court dismissed Bobcar’s patent claims for lack of statutory standing after Bobcar failed to prove that the patents had been assigned to it. The court later granted summary judgment dismissing Bobcar’s remaining claims. The Federal Circuit affirmed that decision on March 5, 2021.

Aardvark then moved for attorney’s fees and costs under the Patent Act and the Lanham Act. It also sought fees as sanctions under 28 U.S.C. § 1927 and under the court’s inherent authority.

Patent Act Fees

Section 285 of the Patent Act permits a court to award reasonable attorney’s fees to the prevailing party in an “exceptional” case. Applying the Supreme Court’s standard, the court considered whether Bobcar’s legal position was unusually weak or whether Bobcar litigated the case unreasonably.

The court concluded that neither circumstance was present. Bobcar had not produced a written patent assignment, but the inventors, who were Bobcar principals, intended to transfer the patent rights to Bobcar and had verbally done so. The patents also listed Bobcar as the assignee. The court noted that Bobcar had possible ways to address the standing problem, including proving that a written assignment existed but had been lost or adding the inventors as parties. Bobcar did not successfully pursue those options, but its position was not frivolous and its conduct was not exceptional enough to justify fees.

Lanham Act Fees

The Lanham Act also permits attorney’s fees in exceptional cases. The court held that fees were not warranted for Bobcar’s trade-dress claims. Although the court granted summary judgment against those claims and excluded certain opinions from Bobcar’s expert, Bobcar identified protectable trade dress and presented a plausible infringement claim. Its failure to present a triable case that the trade dress had acquired secondary meaning did not make its legal position or litigation conduct exceptional.

Sanctions

Aardvark relied on discovery disputes and other alleged litigation misconduct to seek sanctions under 28 U.S.C. § 1927 and the court’s inherent authority. The court acknowledged that the case involved several discovery issues involving both parties and multiple requests for court intervention. It nevertheless found no bad faith by Bobcar or its counsel and no vexatious, harassing, egregious, or otherwise unreasonable conduct warranting sanctions.

Disposition

Judge J. Paul Oetken denied Aardvark’s motion for attorney’s fees and costs. The court also declined to award sanctions against any party or counsel and directed the Clerk of Court to close the motion at Docket Number 165.