U.S. Appeals Court for the Federal Circuit Affirms Decision on Hitkansut Attorney Fees
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Dickinson Wright PLLC is pleased to announce that the U.S. Appeals Court for the Federal Circuit released a 12-page opinion on May 1, 2020 affirming Hitkansut LLC’s request for attorneys’ fees and costs in an amount of $4.4 Million. Attorneys John S. Artz, Franklin M. Smith, John A. Artz and Robert Avers represented Hitkansut LLC and Acceledyne Technologies, Ltd. LLC (collectively, “Hitkansut”) in a patent infringement case against Oak Ridge National Laboratory, a research laboratory operated by the U.S. Department of Energy that began in 2012.
“We are extremely pleased with the U.S. Court of Appeals ruling in this case in favor of our client, Hitkansut LLC,” said John S. Artz, Member and Co-Chair of Dickinson Wright’s Intellectual Property Litigation Practice Group. “This case makes clear that while the Government may take a person’s patent, the manner in which the Government takes the patent of a small company can have adverse consequences including an award of fees against the Government. We are happy that we were able to provide the necessary tools in the successful pursuit of our client’s claims of patent infringement against the U.S. government.”
According to the opinion written by Chief Judge Sharon Prost, “For the foregoing reasons, we conclude that “the position of the United States” as used in § 1498(a) refers to the litigation positions taken by the United States in the civil action in which the attorneys’ fees were incurred. We also conclude that the Claims Court did not abuse its discretion in finding that the position of the United States was not substantially justified in this case and did not abuse its discretion by declining to further reduce its award of attorneys’ fees. Accordingly, the Claims Court’s award of attorneys’ fees is affirmed.” To read Judge Prost’s full opinion, please click here.
Hitkansut’s founder, Ms. Donna M. Walker, invented and patented a materials processing method that provides unexpected benefits including significant energy savings, accelerated material processing efficiencies, and the ability to create new materials. In an effort to commercialize this novel method, Hitkansut disclosed it to Oak Ridge National Laboratory (ORNL) under a Non-Disclosure Agreement. ORNL took Ms. Walker’s novel method, used it for its own benefit, including filing multiple patent applications and then won a prestigious industry research award. Hitkansut then filed suit against the U.S. Government in the Court of Federal Claims.
The case ultimately went to trial where Dickinson Wright demonstrated that ORNL infringed Ms. Walker’s patents and rejected ORNL’s invalidity challenges. The Claims Court also awarded Ms. Walker and her companies compensation for the infringement. The decision of the Claims Court was affirmed by the Federal Circuit in all respects. Hitkansut’s fee request that is the subject of this recent decision by the Federal Circuit followed.
Dickinson Wright’s Patent Litigation team handles domestic and international disputes involving patent infringement, validity, enforceability and ownership. Many of our patent litigators are registered to practice before the United States Patent and Trademark Office (USPTO) and have technical degrees in areas such as electrical engineering, mechanical engineering, chemical engineering, computer science, and aerospace engineering – giving us in-depth insight into our client’s highly technical issues. We provide a team approach that is successful, efficient, and economical. To learn more about our Patent Litigation practice, please click here.
“We are extremely pleased with the U.S. Court of Appeals ruling in this case in favor of our client, Hitkansut LLC,” said John S. Artz, Member and Co-Chair of Dickinson Wright’s Intellectual Property Litigation Practice Group. “This case makes clear that while the Government may take a person’s patent, the manner in which the Government takes the patent of a small company can have adverse consequences including an award of fees against the Government. We are happy that we were able to provide the necessary tools in the successful pursuit of our client’s claims of patent infringement against the U.S. government.”
According to the opinion written by Chief Judge Sharon Prost, “For the foregoing reasons, we conclude that “the position of the United States” as used in § 1498(a) refers to the litigation positions taken by the United States in the civil action in which the attorneys’ fees were incurred. We also conclude that the Claims Court did not abuse its discretion in finding that the position of the United States was not substantially justified in this case and did not abuse its discretion by declining to further reduce its award of attorneys’ fees. Accordingly, the Claims Court’s award of attorneys’ fees is affirmed.” To read Judge Prost’s full opinion, please click here.
Hitkansut’s founder, Ms. Donna M. Walker, invented and patented a materials processing method that provides unexpected benefits including significant energy savings, accelerated material processing efficiencies, and the ability to create new materials. In an effort to commercialize this novel method, Hitkansut disclosed it to Oak Ridge National Laboratory (ORNL) under a Non-Disclosure Agreement. ORNL took Ms. Walker’s novel method, used it for its own benefit, including filing multiple patent applications and then won a prestigious industry research award. Hitkansut then filed suit against the U.S. Government in the Court of Federal Claims.
The case ultimately went to trial where Dickinson Wright demonstrated that ORNL infringed Ms. Walker’s patents and rejected ORNL’s invalidity challenges. The Claims Court also awarded Ms. Walker and her companies compensation for the infringement. The decision of the Claims Court was affirmed by the Federal Circuit in all respects. Hitkansut’s fee request that is the subject of this recent decision by the Federal Circuit followed.
Dickinson Wright’s Patent Litigation team handles domestic and international disputes involving patent infringement, validity, enforceability and ownership. Many of our patent litigators are registered to practice before the United States Patent and Trademark Office (USPTO) and have technical degrees in areas such as electrical engineering, mechanical engineering, chemical engineering, computer science, and aerospace engineering – giving us in-depth insight into our client’s highly technical issues. We provide a team approach that is successful, efficient, and economical. To learn more about our Patent Litigation practice, please click here.
