Not a Lexis Advance subscriber? Try it out for free.

Romag Fasteners, Inc. v. Fossil, Inc.

United States Court of Appeals for the Federal Circuit

August 9, 2017, Decided

2016-1115, 2016-1116, 2016-1842

Opinion

 [*1333]  [***1631]   Dyk, Circuit Judge.

Romag Fasteners, Inc. ("Romag") owns U.S. Patent No. 5,722,126 ("'126 patent") on magnetic snap fasteners, which it sells under its registered trademark, ROMAG, U.S. Trademark Reg. No. 2,095,367 ("'367 trademark"). Romag sued Fossil, Inc. and various retailers (together, "Fossil") for, inter alia, patent infringement, trademark infringement, and violation of the Connecticut Unfair Trade Practices Act ("CUTPA") [**2]  in the U.S. District Court for the District of Connecticut ("district court"). The jury returned a verdict for Romag, finding that Fossil had engaged in patent and trademark infringement and in unfair trade practices. A two-day bench trial resolving other issues followed, after which the district court entered judgment on the jury verdict. This court affirmed the judgment of patent and trademark infringement; other aspects of the judgment were not appealed. See Romag Fasteners, Inc. v. Fossil, Inc., Nos. 2014-1856, 2014-1857, 686 Fed. Appx. 889, 2017 U.S. App. LEXIS 8608, 2017 WL 1906904 (Fed. Cir. May 3, 2017) ("Romag II").1

Romag sought attorney's fees under the Patent Act, 35 U.S.C. § 285, Lanham Act, 15 U.S.C. § 1117(a), and CUTPA. The district court granted fees under the Patent Act and CUTPA, but not under the Lanham Act. Fossil appeals and Romag cross-appeals. We vacate and remand.

Background

Romag owns the '126 patent and the '367 trademark, which are both directed to magnetic snap fasteners. Romag licensed the '126 patent and the '367 trademark to a Chinese manufacturer, which supplied authentic ROMAG magnetic snaps for use in handbags manufactured and distributed by Fossil. In 2010, a batch of Fossil handbags appeared to contain counterfeit ROMAG magnetic snaps, which led Romag to sue Fossil for, inter [**3]  alia, patent and trademark infringement and violation of the CUTPA. The details of Romag's infringement suit are described in our prior opinion, Romag I, 817 F.3d at 783-84. The jury found Fossil liable for patent and trademark infringement, as well as for engaging in unfair trade practices under the CUTPA. The patent and trademark infringement verdicts were appealed, and we affirmed the judgment of liability. Id. After the trial on the merits, Romag requested attorney's fees under the Patent Act, Lanham Act, and CUTPA.

] Under the Patent Act and the Lanham Act, "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285; 15 U.S.C. § 1117(a).  [***1632]  In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 188 L. Ed. 2d 816 (2014), the Supreme Court held that under 35 U.S.C. § 285, "an 'exceptional' case is simply one that stands out from others with respect to the substantive strength of a party's litigating position . . . or the unreasonable manner in which the case was litigated . . . , considering the totality of the circumstances." 134 S. Ct. at 1756.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

866 F.3d 1330 *; 2017 U.S. App. LEXIS 14644 **; 123 U.S.P.Q.2D (BNA) 1629 ***; 2017 WL 3401337

ROMAG FASTENERS, INC., Plaintiff-Cross-Appellant v. FOSSIL, INC., FOSSIL STORES I, INC., MACY'S, INC., MACY'S RETAIL HOLDINGS, INC., Defendants-Appellants DILLARD'S, INC., NORDSTROM, INC., THE BONTON STORES, INC., THE BONTON DEPARTMENT STORES, INC., BELK, INC., ZAPPOS.COM, INC., ZAPPOS RETAIL, INC., Defendants

Subsequent History: Motion denied by, Costs and fees proceeding at Romag Fasteners, Inc. v. Fossil, Inc., 2018 U.S. Dist. LEXIS 139637 (D. Conn., Aug. 16, 2018)

Prior History:  [**1] Appeals from the United States District Court for the District of Connecticut in Nos. 3:10-cv-01827-JBA, 3:11-cv-00929-CFD, Judge Janet Bond Arterton.

Romag Fasteners, Inc. v. Fossil, Inc., 2016 U.S. Dist. LEXIS 40075 (D. Conn., Mar. 28, 2016)

Disposition: VACATED AND REMANDED.

CORE TERMS

district court, patent, invalidity, attorney's fees, defenses, Lanham Act, indefiniteness, summary judgment, withdrawn, withdraw, trademark infringement, rotatable, litigated, pursuing, cases, non-infringement, trademark, parties, award of fees, counterclaims, frivolous, snaps, totality of the circumstances, patent infringement, trial judge, bad faith, infringement, proceedings, colleagues, reasonable attorney's fees

Patent Law, Damages, Collateral Assessments, Attorney Fees, Trademark Law, Types of Damages, Costs & Attorney Fees, Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Remedies, Costs & Attorney Fees, Attorney Fees & Expenses, Jurisdiction & Review, Summary Judgment, Burdens of Proof, Movant Persuasion & Proof, Trials, Judgment as Matter of Law