Summary
The Federal Circuit held that in awarding attorney's fees under 28 U.S.C. § 1498(a), the "position of the United States" refers **only to litigation positions**, not pre-litigation conduct such as procurement decisions or administrative delays. The court vacated the fee award because the Court of Federal Claims improperly relied on pre-litigation conduct (e.g., failing to include the patentee in a contract team and slow administrative handling) without determining whether the government's litigation conduct alone was sufficient. Additionally, the court found error in concluding that the government's reliance on an expert was unreasonable because the expert had "extraordinary skill"—an expert's high skill level does not make reliance unreasonable for obviousness analysis. Remanded for reconsideration of fees based solely on litigation conduct.
Topics
Practice areas
Questions Presented
- Whether the Claims Court erred in considering the government's pre-litigation conduct in the fee analysis.
- Whether the Claims Court erred in finding the government's litigation conduct regarding Figure 11 units not substantially justified.
- Whether the Claims Court erred in finding the government's reliance on expert Blount not substantially justified.
Holdings
- The Claims Court erred because under Hitkansut, 'the position of the United States' as used in 28 U.S.C. § 1498(a) refers only to positions taken during litigation and does not encompass pre-litigation conduct.
- The Claims Court did not clearly err; the government's position on Figure 11 units was not substantially justified.
- The Claims Court erred because an expert's skill level is irrelevant to the obviousness inquiry; it was not unreasonable to proffer Blount.
Key quotations
“Reliance on this pre-litigation conduct in the fee analysis was error.” (5)
“Because the Claims Court erroneously based its decision in large part on pre-litigation conduct and did not conclude that the litigation conduct itself was sufficient for an award of fees, a remand is required.” (6)
“An 'attack [on an expert] on the grounds that he is not 'a person of ordinary skill in the art'' 'is meritless.'” (8)
“The actual [expert]'s skill is irrelevant to the inquiry.” (8)
Factual background
FastShip is the assignee of two patents for high-speed ship designs. In the early 2000s, the Navy began a program to design littoral combat ships. FastShip met with government contractors under confidentiality agreements but was not awarded a contract. In 2008, FastShip filed an administrative claim with the Navy alleging patent infringement. After the claim was denied, FastShip sued in the Court of Federal Claims, which found the patents valid and infringed. This court affirmed in FastShip I. FastShip then moved for attorney's fees under § 1498(a).
Procedural history
FastShip prevailed on patent infringement claims against the United States in the Court of Federal Claims. After affirmance on appeal, FastShip moved for attorney's fees under 28 U.S.C. § 1498(a). The Claims Court awarded fees, finding the government's position not substantially justified. The government appeals.
Remand instructions
On remand, the Claims Court must consider whether the government's litigation conduct alone, to the extent it was not substantially justified, was sufficient to justify a fee award. The Claims Court should also reconsider the Blount issue consistent with the opinion.