CAFC Vacated District Court’s Award of Attorney’s Fees Based on Patent Ineligibility Findings

In Realtime Adaptive Streaming L.L.C. v. DISH Technologies L.L.C., No. 23-1035 (Fed. Cir. Aug. 23, 2024), the Federal Circuit vacated the district court’s award of attorney’s fees predicated on patent ineligibility.

Realtime sued DISH, alleging infringement of the ’610 patent, the ’535 patent, and the ’897 patent, which are generally related to digital data compression. The district court identified six “red flags” for its award of attorney’s fees: (1) two district court decisions finding claims 15-30 of the ’535 patent as patent-ineligible, and claim 1 of the ’610 patent ‘essentially the same’ as claim 15 of the ’535 patent; (2) the Federal Circuit’s prior non-precedential decisions holding similar types of patents patent-ineligible; (3) the PTAB’s decision finding the claims of the ’535 patent unpatentable; (4) the USPTO’s non-final office actions rejecting claim 1 of the ’610 patent as obvious; (5) DISH’s letter to Realtime alleging invalidity and threatening to seek its attorney’s fees; and (6) DISH’s expert opinions for summary judgment.

The Federal Circuit disagreed. Although the district court did not err in giving weight to the first red flag, it erred in relying on the remaining red flags without explaining their weight, some of which should not have been given any weight. The Federal Circuit remanded the case so the district court could reconsider its decision.