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

Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs.

United States Court of Appeals for the Federal Circuit

June 5, 2017, Decided

2016-2521

Opinion

 [*1385]  [***1802]   Wallach, Circuit Judge.

Appellant ADS Security, L.P. ("ADS") appeals the opinion and order of the U.S. District Court for the Eastern District of Texas ("District Court") denying ADS's request for attorney fees pursuant to 35 U.S.C. § 285 (2012). See Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs., Inc., No. 2:15-cv-01431-JRG-RSP, 2016 U.S. Dist. LEXIS 92845, 2016 WL 3883549, at *4 (E.D. Tex. July 18, 2016). The District Court found that Appellee Rothschild Connected Devices Innovations, LLC ("Rothschild") had not engaged in conduct sufficient [**2]  to make the litigation "exceptional," such that ADS did not merit attorney fees pursuant to § 285. See 2016 U.S. Dist. LEXIS 92845, [WL] at *1-3.

ADS appeals the District Court's exceptional case determination. We possess subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012). We reverse and remand.

Background

The instant dispute arises as a consequence of Rothschild's allegation that ADS's home security system infringes U.S. Patent No. 8,788,090 ("the '090 patent"). The '090 patent generally recites "[a] system and method for creating a personalized consumer product," '090 patent, Abstract, where the system and method "enable a user to customize products containing solids and fluids by allowing a server on the global computer network, e.g., the Internet, to instruct the hardware mixing the solids and fluids of the user's preferences for the final mix," id. col. 1 ll. 58-62. Rothschild has filed numerous lawsuits against various parties alleging infringement of the '090 patent. J.A. 1086, 1097.

Rothschild filed a complaint against ADS alleging infringement of claim 1 of the '090 patent. J.A. 62, 73. ADS responded by filing an answer and counterclaims. J.A. 84-92. ADS subsequently sent an email to Rothschild alleging that the '090 patent covers patent-ineligible subject matter under 35 U.S.C. § 1011 and that prior art anticipates claim 1 of the '090 patent under [**3]  35 U.S.C. § 102(a)(1).2 J.A.  [*1386]  704. ADS offered to settle the case if Rothschild paid ADS $43,330 for attorney fees and costs. J.A. 704. Rothschild rejected ADS's offer. J.A. 855.

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.

858 F.3d 1383 *; 2017 U.S. App. LEXIS 9876 **; 122 U.S.P.Q.2D (BNA) 1801 ***; 2017 WL 2407870

ROTHSCHILD CONNECTED DEVICES INNOVATIONS, LLC, Plaintiff-Appellee v. GUARDIAN PROTECTION SERVICES, INC., ALARM SECURITY GROUP, LLC, CENTRAL SECURITY GROUP - NATIONWIDE, INC., GUARDIAN ALARM COMPANY, GUARDIAN OF GEORGIA, INC., DBA ACKERMAN SECURITY SYSTEMS, ICON SECURITY SYSTEMS, INC., MONITRONICS INTERNATIONAL, INC., SLOMIN'S, INC., Defendants; ADS SECURITY, L.P., Defendant-Appellant

Subsequent History: On remand at, Costs and fees proceeding at Rothschild Connected Devices Innovations, LLC v. ADS Sec., L.P., 2017 U.S. Dist. LEXIS 185342 (E.D. Tex., Nov. 8, 2017)

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of Texas in Nos. 2:15-cv-01431-JRG-RSP, 2:15-cv-01463-JRG-RSP, 2:15-cv-01464-JRG-RSP, 2:15-cv-01462-JRG-RSP, 2:15-cv-01496-JRG-RSP, 2:15-cv-01429-JRG-RSP, 2:15-cv-01468-JRG-RSP, 2:15-cv-01466-JRG-RSP, 2:15-cv-01469-JRG-RSP Judge J. Rodney Gilstrap.

Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs., 2016 U.S. Dist. LEXIS 92845 (E.D. Tex., July 18, 2016)

Disposition: REVERSED AND REMANDED.

CORE TERMS

patent, district court, prior art, infringement, founder, attorney's fees, products, exceptional case, Notice, safe harbor, circumstances, Innovations, anticipates, purportedly, litigating, subject matter, oral argument, good faith, Cross-Motion, references, quotation, lawsuits, asserts, covers, marks

Patent Law, Damages, Collateral Assessments, Attorney Fees, Jurisdiction & Review, Standards of Review, Abuse of Discretion