Six Shooter Pipe Patent Is Infringed, But Not Willfully

January 31, 2014

The U.S. Court of Appeals for the Federal Circuit in a nonprecedential ruling on November 21 affirmed a district court’s decision that found a pistol-shaped tobacco pipe patent infringed, but it reversed the judgment that the defendant’s infringement was willful (Lee v. Mike’s Novelties Inc., Fed. Cir., No. 2013-1049, 11/21/13).

Jake Lee’s patent (6,418,936) relates to a metal tobacco pipe designed to resemble a Colt Six Shooter pistol. The claims and specification require that the turret remains stationary relative to the manifold because of its heavier weight. Thus, the weight differential ensures consistent alignment between the turret and manifold so that smoke can pass through the stem when the user inhales.

The Federal Circuit did not disturb the ruling below that Mike’s  Novelties Inc. infringed the ‘936 patent. However, the court reversed the ruling that awarded Lee enhanced damages of $70,000 for willful infringement pursuant to 35 U.S.C. §284. Under In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007), a willfulness finding requires two elements: 1) clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent and 2) a showing that the accused infringer subjectively knew of the “objectively-defined risk” or should have known because the risk was so obvious. Here, Judge Timothy B. Dyk found that the first required Seagate element was not met since the evidence “was close” on the issue of infringement. Noting that the weight differential amounted only to 13 grams and Lee only weighed of the two accused pipes as part of his evidence, the jury could have found either way on this issue, Dyk wrote. Even though the infringement verdict was supported by substantial evidence, given that there was “countervailing evidence to support the defendant’s theory as well,” the defendant’s defense was not unreasonable, he explained. Having found that the first Seagate prong was not satisfied, Dyk reversed the willfulness ruling.

The appellate court went on to also reverse and remand the award of $231,000 in attorneys’ fees to Lee pursuant to 35 U.S.C. §285. Under this section of the Patent Act, a court may award attorneys’ fees to the prevailing in “exceptional cases.” Such an award turns on 1) whether the case is “exceptional” and 2) whether an award of fees is appropriate. Pointing to Forest Labs Inc., v. Abbott Labs., 339 F.3d 1324 (Fed. Cir. 2003), Dyk noted that exceptional cases have been held to involve inequitable conduct before the Patent and Trademark Office, litigation misconduct, vexatious or frivolous litigation, willful infringement, and other factors. He related that the district court based its award of attorneys’ fees on the “totality of the circumstances, including the jury’s finding of willfulness.” While Mike’s Novelties was alleged to have engaged in bad conduct during discovery and by threatening to report Lee’s counsel to the state bar association, the district court also gave weight to the willful infringement finding, Dyk explained. Since it is not clear that the district court would have found this case exceptional based solely on the defendant’s litigation misconduct, this question must be remanded, Dyk concluded.