Realtime Adaptive Streaming L.L.C. v. Sling TV, L.L.C., et al., No. 2023-1035 (Fed. Cir. (D. Colo.) Aug. 23, 2024). Opinion by Albright (sitting by designation), joined by Moore and Lourie.
Realtime sued DISH and associated Sling entities for infringement of three patents associated to digital knowledge compression. Eventually the case narrowed to only one asserted patent, the ’610 patent. The district court docket discovered the asserted claims ineligible as summary below 35 U.S.C. § 101, and the Federal Circuit affirmed in a previous resolution.
While that discovering of ineligibility was on enchantment, the district court docket granted DISH’s movement for attorneys’ charges. In awarding charges, the district court docket recognized six “red flags” or hazard indicators that it held ought to have served as warning indicators to Realtime: (1) selections by different district courts within the “Google” and “Netflix” circumstances discovering related claims of a associated patent ineligible; (2) a nonprecedential resolution by the Federal Circuit in Adaptive Streaming v. Netflix; (3) two Patent Trial and Appeal Board selections invalidating claims of a associated patent for anticipation and obviousness; (4) a reexamination of the ’610 patent rejecting the claims as unpatentable for obviousness; (5) a discover letter despatched by DISH to Realtime conveying its perception the ’610 patent was invalid and expressing an intention to hunt attorneys’ charges; and (6) opinions by DISH’s skilled witness on invalidity and ineligibility.
Considering every of those six pink flags, the district court docket discovered that “Realtime’s dogged pursuit of the case notwithstanding those danger signals renders this an exceptional case” warranting attorneys’ charges. Realtime appealed.
The Federal Circuit vacated and remanded as a result of the district court docket abused its discretion to find the case distinctive. The Federal Circuit defined that “the district court relied on the six red flags without explaining the weight for each flag,” and “some of these red flags should not have been accorded any weight.”
Addressing every of the six pink flags, the Federal Circuit first agreed with the district court docket as to the Google and Netflix selections (the primary pink flag). The selections concerned a patent with a “virtually identical” specification and claims that had been “essentially the same in substance” because the ’610 patent claims, in order that they “were a significant red flag to Realtime to reconsider its patent eligibility position of the asserted claims of the ’610 patent.”
The Federal Circuit disagreed, nevertheless, with the district court docket’s evaluation of the remaining pink flags. The Adaptive Streaming resolution (the second pink flag) “was about a different technology entirely” and thus “should not have been treated as a red flag.” As for the 2 Board selections on anticipation and obviousness of a associated patent (the third pink flag), the Federal Circuit acknowledged that the district court docket “failed to explain why the decisions were relevant in awarding attorneys’ fees.” The selections “concerned different sections of the Patent Act and did not analyze whether anything in the prior art was well-understood, routine, or conventional” to place Realtime on discover that its arguments for the eligibility of the ’610 patent claims had been meritless.
Next, as to sure workplace actions issued in a reexamination of the ’610 patent (the fourth pink flag), the Federal Circuit mentioned “it is unclear whether these office actions were used by the district court as red flags,” but when it did then the court docket “failed to adequately explain how these Board decisions sufficed to support a finding of exceptionality.”
The Federal Circuit likewise defined that “it is not clear what it is about the notice letter” (the fifth pink flag) that made the district court docket deal with it as a pink flag. “The district court did not say.” The Federal Circuit defined that “simply being on notice of adverse case law and the possibility that opposing counsel would pursue [attorneys’] fees does not amount to clear notice that the ’610 claims were invalid,” so the letter is “not sufficient to support an exceptionality finding in this case.”
Lastly, the Federal Circuit addressed the opinions of DISH’s skilled witness (the sixth pink flag). DISH argued that its skilled’s opinions “warranted serious consideration,” however the Federal Circuit dominated that, “without at least an explanation for why Realtime and [its expert] did not show ‘serious consideration’ of [DISH’s expert’s] opinions, the district court’s analysis was insufficient to support a finding of exceptionality.”
In the top, the Federal Circuit vacated and remanded for additional consideration, whereas providing “no opinion on the correct disposition of DISH’s attorneys’ fees motion on remand.”
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