Electronic Communication v. shopperschoice.com, LLC ( 2020 )

Case: 19-2087 Document: 71 Page: 1 Filed: 07/01/2020
United States Court of Appeals
for the Federal Circuit
______________________
ELECTRONIC COMMUNICATION
TECHNOLOGIES, LLC,
Plaintiff-Appellee
v.
SHOPPERSCHOICE.COM, LLC,
Defendant-Appellant
______________________
2019-2087
______________________
Appeal from the United States District Court for the
Southern District of Florida in Nos. 9:16-cv-81669-KAM,
9:16-cv-81677-KAM, Senior Judge Kenneth A. Marra.
______________________
Decided: July 1, 2020
______________________
ARTOUSH OHANIAN, OhanianIP, Austin, TX, argued for
plaintiff-appellee.
DAVID K. FRIEDLAND, Friedland Vining, PA, Miami, FL,
argued for defendant-appellant. Also represented by
JAMES STEPAN, Law Offices of James A. Stepan, P.A., Hol-
lywood, FL.
______________________
Before PROST, Chief Judge, DYK and WALLACH, Circuit
Judges.
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2 ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC
WALLACH, Circuit Judge.
Appellant ShoppersChoice.com, LLC (“Shop-
persChoice”) appeals the denial of attorney fees by the U.S.
District Court for the Southern District of Florida (“District
Court”) pursuant to 35 U.S.C. § 285, following a judgment
invalidating independent claim 11 of Appellee Electronic
Communication Technologies, LLC’s (“ECT”) U.S. Patent
No. 9,373,261 (“the ’261 patent”) as patent ineligible under
35 U.S.C. § 101. J.A. 1626–28 (Attorney Fee Order); see
J.A. 1629 (Order Denying Motion for Reconsideration of
Denial of Attorney Fees); see also J.A. 1–17 (Motion to Dis-
miss Judgment), 18–34 (Judgment on the Pleadings). 1 We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). We
vacate and remand.
BACKGROUND
This case arises from ECT’s allegation that Shop-
persChoice infringed claim 11 of the ’261 patent. J.A. 1049.
Entitled “Secure Notification Messaging with User Option
to Communicate with Delivery or Pickup Representative,”
the ’261 patent is directed “to systems and methods that
notify a party of travel status associated with one or more
mobile things (MTs).” ’261 patent col. 1 ll. 50–51. Inde-
pendent claim 11 recites a system that provides notifica-
tion “involving advance notice of a delivery or pickup of a
good or service” to a “personal communication device
(PCD)[,]” by means of “one or more transceivers[,]” “one or
more memories[,]” “one or more processors[,]” and a “com-
puter program code[.]” Id. col. 93 ll. 12–45; see id. col. 6
ll. 31–33 (describing “a possible screen message that can
1 We affirmed the District Court’s decision on the
merits. See Elec. Commc’n Techs., LLC v. Shop-
persChoice.com, LLC, 958 F.3d 1178 (Fed. Cir. 2020).
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ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC 3
be . . . shown on a notified PCD . . . during a notification
communication”); id. Fig. 16A. 2
In September 2016, ECT filed a complaint in the Dis-
trict Court against ShoppersChoice for, inter alia, infringe-
ment of claim 11. J.A. 1399 (Amended Complaint); see J.A.
1049 (Complaint). 3 In December 2016, ShoppersChoice
filed a motion for judgment on the pleadings, challenging
claim 11 as patent ineligible. J.A. 1513–14; see 35 U.S.C.
§ 101. In February 2017, following discovery, the parties
filed a joint claim construction statement, in which ECT
specified that each of the disputed terms in claim 11 should
be given its “[o]rdinary and customary meaning.”
J.A. 1582–88; see J.A. 1581–90 (Joint Claim Construction
Statement). ShoppersChoice then moved to join a patent-
eligibility hearing set in a parallel lawsuit, also before the
District Court, in which ECT alleged claim 11 infringement
against other companies. J.A. 1047–48. The District Court
granted the motion and conducted a consolidated patent-
eligibility hearing regarding claim 11. See Motion Hearing,
Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
No. 9:16-cv-81677-KAM (S.D. Fla. Apr. 7, 2017), ECF
No. 59. 4
2 ECT’s previous name was Eclipse IP, LLC; the en-
tity changed names in 2015. J.A. 255. Eclipse IP was listed
as the applicant for the ’261 patent, but the patent was as-
signed to ECT following the name change. J.A. 35, 520.
3 While ECT initially claimed that ShoppersChoice
infringed claims from three patents, it subsequently
amended its Complaint to assert infringement only of
claim 11 of the ’261 patent. J.A. 1626.
4 These parallel proceedings before the District
Court include: Elec. Commc’n Techs., LLC v. Minted, LLC,
No. 16-cv-81669-KAM; Elec. Commc’n Techs., LLC v.
Lakeshore Equip. Co., No. 16-cv-81672-KAM; and Elec.
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4 ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC
Following the hearing, the District Court granted
ShoppersChoice’s motion for a judgment on the pleadings
and invalidated independent claim 11 of the ’261 patent.
J.A 33–34; see J.A. 1581–90. The District Court conducted
the two-step analysis set forth in Alice Corp. Party Ltd. v.
CLS Bank International, 573 U.S. 208 (2014). J.A. 20–33.
The District Court determined that, under Alice step one,
“[independent] [c]laim 11 is directed to the abstract idea of
providing advance notification of the pickup or delivery of
a[n] [MT].” J.A. 23. Regarding Alice step two, the District
Court concluded that “the elements of [independent]
[c]laim 11 do not transform the abstract idea that they re-
cite into . . . patent-eligible subject matter.” J.A. 27–28.
Accordingly, the District Court concluded that independent
claim 11 was directed to patent-ineligible subject matter
and granted judgment on the pleadings to ShoppersChoice.
J.A. 33–34. We recently affirmed the District Court, hold-
ing that “the claim only entails applying longstanding com-
mercial practices using generic computer components and
technology.” ShoppersChoice.com, 958 F.3d at 1183.
Subsequently, ShoppersChoice filed a motion for attor-
ney fees. See ShoppersChoice.com’s Local Rule 7.3 Motion
for Attorneys’ Fees (“Motion for Attorney Fees”) at 5, Elec.
Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
No. 9:16-cv-81677-KAM (S.D. Fla. Mar. 15, 2019), ECF
No. 82. In it, ShoppersChoice cited evidence it presented
to the District Court that ECT sent standardized demand
letters and filed repeat patent infringement actions for the
purpose of obtaining low-value “license fees” and forcing
settlements. Id. at 4–5. Specifically, ShoppersChoice had
provided the District Court with evidence that, be-
tween 2011 and 2015, ECT, under its former name Eclipse,
filed lawsuits against at least 150 defendants, alleging
Commc’n Techs., LCC v. Pep Boys–Manny, Moe & Jack,
d/b/a The Pep Boys, No. 16-cv-81676-KAM. See id.
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ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC 5
infringement of claims in the ’261 patent and in other pa-
tents in the ’261 patent’s family. Id. at 4. Following attor-
ney fee briefing, but before the District Court ruled, the
U.S. District Court for the Central District of California
(“California District Court”) entered an award of attorney
fees against ECT in yet another case for conduct related to
one of ECT’s numerous ’261 patent infringement lawsuits.
See Kindred Studio Illustration & Design, LLC v. Elec.
Commc’n Techs., LLC (“True Grit”), Case No. 2:18-cv-
07661-GJS, 2019 WL 3064112, at *6–9 (C.D. Cal. May 23,
2019). ShoppersChoice filed a letter of supplemental au-
thority informing the District Court of the ruling.
J.A. 2155–56. 5
A week after the letter was filed, the District Court de-
nied ShoppersChoice’s motion for the award of attorney
fees. J.A. 1628; see J.A. 1626–28 (Attorney Fee Order). In
doing so, the District Court explained that “[u]nder the
Lanham Act, ‘[t]he court in exceptional cases may award
reasonable attorney fees to the prevailing party.’”
J.A. 1627 (quoting 15 U.S.C. § 1117). In “considering the
totality of the circumstances,” the District Court deter-
mined the case was not exceptional. J.A. 1627. First, the
5 Prior to the instant action, ECT filed a lawsuit in
the California District Court, alleging infringement of
ECT’s U.S. Patent Nos. 7,064,681 (“the ’681 patent”),
7,113,110 (“the ’110 patent”), and 7,119,716 (“the ’716 pa-
tent”) against McKinley Equipment Corporation. See
Eclipse IP LLC v. McKinley Equip. Corp. (“McKinley”), No.
SAVC 14-154-GW(AJWx), 2014 WL 4407592, at *1 (C.D.
Cal. Sept. 4, 2014). The ’681, ’110, and ’716 patents all con-
tain claims that recite methods for a computer-based noti-
fication system. See id. The California District Court
conducted patent eligibility analysis for each asserted
claim in the ’681, ’110, and ’716 patents and concluded that
they were patent ineligible. See id. at *7, 9, 11, 12.
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6 ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC
District Court explained that “the substantive strength of
the litigating position in this case does not render [it] ‘ex-
ceptional[,]’” as ECT’s “litigating position was [not] so obvi-
ously weak[.]” J.A. 1627. The District Court explained
that, as “[t]here were no binding cases on point that stated
that automated delivery notification [wa]s an abstract
idea[,]” “the [District] Court analogized delivery notifica-
tion to the kinds of conventional business practices that
have been found to be abstract ideas.” J.A. 1627. “Moreo-
ver,” the District Court stated that it “had to” analyze
whether independent claim 11 “was directed to a trans-
formative application of an abstract idea[,]” suggestive of
some substantive strength. J.A. 1628. Second, the District
Court stated that it “[could not] conclude that [ECT] exhib-
ited the kind of unreasonable behavior that would make
this case stand apart from others.” J.A. 1628. Accordingly,
the District Court denied ShoppersChoice’s Motion for At-
torney Fees. J.A. 1628. ShoppersChoice moved for recon-
sideration, J.A. 2175–76, which the District Court denied,
J.A. 1629.
DISCUSSION
I. Standard of Review and Legal Standard
Pursuant to the Patent Act’s fee-shifting provision, a
“[district] court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 35 U.S.C. § 285 (em-
phasis added). “[A]n ‘exceptional’ case is simply one that
stands out from others with respect to the substantive
strength of a party’s litigating position (considering both
the governing law and the facts of the case) or the unrea-
sonable manner in which the case was litigated.” Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545,
554 (2014). A “[d]istrict court[] may determine whether a
case is ‘exceptional’ in the case-by-case exercise of [its] dis-
cretion, considering the totality of the circumstances.” Id.
While “there is no precise rule or formula” for considering
the totality of the circumstances, id. (internal quotation
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ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC 7
marks and alteration omitted) (citing Fogerty v. Fantasy,
Inc., 510 U.S. 517, 534 (1994)), a district court may weigh
such factors as “frivolousness, motivation, objective unrea-
sonableness (both in the factual and legal components of
the case)[,] and the need in particular circumstances to ad-
vance considerations of compensation and deterrence[,]” id.
at 554 n.6 (internal quotation marks omitted) (citing
Fogerty, 510 U.S. at 534 n.19). Section 285 “imposes no
specific evidentiary burden,” and is instead “a simple dis-
cretionary inquiry[.]” Id. at 557.
We review a district court’s denial or grant of attorney
fees under § 285 for abuse of discretion. See Highmark Inc.
v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 561 (2014);
see also ThermoLife Int’l LLC v. GNC Corp., 922 F.3d 1347,
1356 (Fed. Cir. 2019) (“We review a district court’s grant of
attorney[] fees under § 285 for abuse of discretion.”). An
abuse of discretion occurs where a district court makes “a
clear error of judgment in weighing relevant factors or in
basing its decision on an error of law or on clearly errone-
ous factual findings.” Bayer CropScience AG v. Dow Agro-
Sciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017)
(internal quotation marks and citation omitted). “A factual
finding is clearly erroneous if, despite some supporting ev-
idence, we are left with the definite and firm conviction
that a mistake has been made.” Insite Vision Inc. v.
Sandoz, Inc., 783 F.3d 853, 858 (Fed. Cir. 2015) (internal
quotation marks and citation omitted). A district court
must “provide a concise but clear explanation of its reasons
for the fee award.” Hensley v. Eckerhart, 461 U.S. 424, 437
(1983); see In re Rembrandt Techs. LP Patent Litig., 899
F.3d 1254, 1276 (Fed. Cir. 2018).
II. The District Court’s Exceptional Case Determination
Constitutes an Abuse of Discretion
The District Court denied ShoppersChoice’s Motion for
Attorney Fees, by finding the case not “exceptional” under
the Lanham Act. J.A. 1627–28 (citing 15 U.S.C. § 1117).
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8 ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC
ShoppersChoice contends that the District Court abused
its discretion in weighing relevant factors, Appellant’s
Br. 31, and by applying the incorrect attorney fee statute,
id. at 40. We agree with ShoppersChoice.
A. The District Court Failed to Address ECT’s Manner of
Litigation
The District Court clearly erred by failing to address
ECT’s manner of litigation and the broader context of
ECT’s lawsuit against ShoppersChoice. See generally
J.A. 1626–28. These are relevant considerations. See SFA
Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1350 (Fed.
Cir. 2017) (“[A] pattern of litigation abuses characterized
by the repeated filing of patent infringement actions for the
sole purpose of forcing settlements, with no intention of
testing the merits of one’s claims, is relevant to a district
court’s exceptional case determination under § 285.”). Be-
fore the District Court was evidence that ECT sent stand-
ardized demand letters and filed repeat patent
infringement actions to obtain low-value “license fees” and
forcing settlements. See Motion for Attorney Fees at 5. For
example, ShoppersChoice provided the District Court with
evidence that, between 2011 and 2015, ECT, under its for-
mer name Eclipse, filed lawsuits against at least 150 de-
fendants, alleging infringement of claims in the ’261 patent
and in other patents in the ’261 patent’s family. Id. at 4.
This number does not reflect the additional pre-litigation
demands made by ECT. See generally id. ECT’s demand
for a low-value settlement—ranging from $15,000 to
$30,000—and subsequent steps—such as failure to proceed
in litigation past claim construction hearings—indicates
the use of litigation to achieve a quick settlement with no
intention of testing the strength of the patent or its allega-
tions of infringement. See id. at 4–6. Not only did Shop-
persChoice provide the District Court with a list of other
court proceedings involving ECT and its demand letters in-
volving claim 11, id. at 5, ShoppersChoice filed the True
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ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC 9
Grit opinion with the District Court prior to its attorney fee
determination, J.A. 2155–56.
Indeed, the True Grit opinion reveals problems with
the District Court’s analysis. The opinion provided a de-
tailed account of ECT’s practice of seeking nuisance-value
license fees. True Grit, 2019 WL 3064112, at *8–9. In the
decision, the California District Court concluded that
awarding attorney fees against ECT was appropriate, ei-
ther “consider[ing] only the litigation history of ECT (as
both ECT and Eclipse IP) or the entire history of the enti-
ties that True Grit has demonstrated are related (including
Shipping & Transit[, LLC (‘S&T’)]) the [California District]
Court can discern a clear pattern of serial filings, and also
several (and presumably many more) instances of threats
of litigation, intended only to obtain quick settlements[.]”
Id. at *9. In reviewing ECT’s actions, the California Dis-
trict Court explained that “ECT’s immediate demand for a
low[-]value settlement, apparent willingness to reduce that
amount to avoid any challenge to its patent, and immediate
provision of a [covenant not to sue] to True Grit once the
declaratory judgment action was filed demonstrate ECT’s
‘in terrorem’ tactics—threatening litigation in hopes of a
quick settlement with no intention of ever testing either
the strength of its patent or its allegations of infringe-
ment.” Id. Moreover, the California District Court took
judicial notice of “yet another litigious entity,” S&T, “seek-
ing nuisance value patent ‘rents’ that is helmed by many of
the same individuals that control ECT[.]” Id. at *5. It ex-
plained that “[a]fter extracting nuisance value rents in
many filed cases—and more than likely additional pre-liti-
gation demand situations—[S&T] finally stopped sending
demand letters and filing lawsuits after several federal
courts” awarded attorney fees. Id. The California District
Court stated that S&T then “filed for bankruptcy in an ap-
parent bid to avoid paying attorney[] fees or other sanc-
tions.” Id. The California District Court highlighted that
“ECT [does not] affirmatively state—in the [California
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10 ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC
District] Court’s view, because it cannot while remaining
in compliance with [Federal Rule of Civil Procedure]
Rule 11 and ethical rules—that the same group of people
do not control the actions of each of these rent-seeking shell
holding companies.” Id. Moreover, the California District
Court explained that ECT did not contest True Grit’s as-
sertion that, of the 875 times ECT has asserted the ’261
patent and other patents in the patent family, ECT has
never “tak[en] a single case to a merits determination.” Id.
at *6. 6
6 Additionally, before the District Court was evi-
dence that ECT’s conduct regarding the ’261 patent was
not an isolated practice. ShoppersChoice presented evi-
dence that ECT was managed by Peter Sirianni and had
employed Edward Trumbull as a licensing agent. See Mo-
tion for Attorney Fees at 5. ShoppersChoice asserted that,
prior to and concurrent with running Eclipse and ECT,
Mr. Sirianni and Mr. Trumbull were associated with S&T,
which has been widely recognized as “one of the most pro-
lific” non-practicing entity plaintiffs in the United States.
Id. at 5–6. ShoppersChoice also provided evidence that, at
its peak, S&T had filed over five hundred lawsuits involv-
ing patent infringement and related claims, and that the
pervasive litigation only stopped after several federal
courts granted attorney fees against S&T. Id. at 5; see, e.g.,
Shipping & Transit, LLC v. 1A Auto, Inc., 283
F. Supp. 3d 1290, 1299 (S.D. Fla. 2017); Shipping & Transit,
LLC v. LensDiscounters.com, No. 16-80980-Civ-Rosen-
berg/Brannon, 2017 WL 5434581, at *7–8 (S.D. Fla. July
11, 2017); Shipping & Transit, LLC v. Hall Enterprises, No.
16-cv-06535-AG-AFM, 2017 WL 3485782, at *8 (C.D. Cal.
July 5, 2017). Following these decisions, S&T filed for
bankruptcy. Chapter 7 Voluntary Petition at 1, In re Ship-
ping & Transit, LLC, No. 9:18-bk-20968-MAM (Bankr. S.D.
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ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC 11
Despite the arguments and evidence presented by
ShoppersChoice before the District Court regarding ECT’s
manner of litigation, including the True Grit opinion, the
District Court only briefly addressed ECT’s litigation con-
duct, explaining that it “[could not] conclude that [ECT] ex-
hibited the kind of unreasonable behavior that would make
this case stand apart from others” and that it was not the
“‘rare case’” that would warrant an exceptional determina-
tion. J.A. 1628 (quoting Octane Fitness, 572 U.S. at 555).
There was no mention of the manner in which ECT liti-
gated the case or its broader litigation conduct. J.A. 1626–
28. Such conduct is a relevant consideration. See Roth-
schild Connected Devices Innovations, LLC v. Guardian
Prot. Servs., Inc., 858 F.3d 1383, 1390 (Fed. Cir. 2017) (“[I]n
the absence of evidence demonstrating that [ECT] engaged
in reasonable conduct before the District Court, the undis-
puted evidence regarding [ECT’s] vexatious litigation war-
rants an affirmative exceptional case finding here.”).
“While [a] district court need not reveal its assessment
of every consideration of § 285 motions, it must actually
assess the totality of the circumstances.” AdjustaCam,
LLC v. Newegg, Inc., 861 F.3d 1353, 1360 (Fed. Cir. 2017).
By not addressing the “adequate evidence of an abusive
pattern” of ECT’s litigation, Newegg, 793 F.3d at 1352, the
District Court failed to conduct an adequate inquiry and so
abused its discretion, see Rothschild, 858 F.3d at 1388 (“A
district court abuses its discretion when, as here, it fails to
conduct an adequate inquiry.” (internal quotation marks,
brackets, and citation omitted)); see also Octane Fitness,
572 U.S. at 554, 554 n.6 (stating that, while “there is no
precise rule or formula” in considering the totality of cir-
cumstances, the district court may weigh, inter alia, “the
need in particular circumstances to advance considerations
Fla. Sept. 6, 2018), ECF No. 1; see Motion for Attorney Fees
at 5–6.
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12 ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC
of compensation and deterrence” (internal quotation marks
omitted) (citing Fogerty, 510 U.S. at 534 n.19)); Newegg,
793 F.3d at 1350 (“[A] pattern of litigation abuses charac-
terized by the repeated filing of patent infringement ac-
tions for the sole purpose of forcing settlements, with no
intention of testing the merits of one’s claims, is relevant
to a district court’s exceptional case determination under
§ 285.”).
B. The District Court Failed to Sufficiently Address the
Objective Weakness of Claim 11
The District Court clearly erred by failing to consider
the objective unreasonableness of ECT’s alleging infringe-
ment of claim 11 against ShoppersChoice. The Attorney
Fee Order did not reference, much less reconcile or account
for, the District Court’s determination on the objective un-
reasonableness of the claims against ShoppersChoice with
the conflicting conclusions reached in True Grit or McKin-
ley. J.A. 1626–28; see Octane Fitness, 572 U.S. at 554 n.6
(explaining that a district court, in analyzing the totality of
circumstances, may weigh, inter alia, the “objective unrea-
sonableness (both in the factual and legal components of
the case)”). In True Grit, the California District Court con-
cluded that “no reasonable patent litigant would have be-
lieved that [c]laim 11 of the ’261 patent”—the same claim
at issue in the instant case—“was viable[.]” 2019
WL 3064112, at *4.
In McKinley, which was decided two years before ECT
filed its Complaint against ShoppersChoice, the California
District Court invalidated claims of patents in the ’261 pa-
tent’s family as patent ineligible under § 101, finding the
claims “directed to the abstract idea of asking people, based
on their location, to go places[,]” and implemented with
only “‘generic computer[s]’” that did not transform the
claims into patent eligible subject matter. 2014
WL 4407592, at *11 (quoting Alice, 573 U.S. at 223). In
True Grit, the California District Court explained that all
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ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC 13
of the asserted claims in McKinley came from patents that
share the same specification as the ’261 patent, and that
“[c]laim 11 of the ’261 [p]atent suffers from the same type
of obvious defect” as the asserted claims in McKinley. 2019
WL 3064112, at *4. While ShoppersChoice stops short of
claiming that either McKinley or True Grit bind the Dis-
trict Court, see generally Appellant’s Br., the absence in the
Attorney Fee Order of any reference to either relevant case,
or any allusion to their opposing conclusions, is problem-
atic, J.A. 1626–28; see AdjustaCam, 861 F.3d at 1360 (ex-
plaining that “[t]he record developed over [time] points to
this case as standing out from others with respect to the
substantive strength of [the] litigating position[,]” as the
“suit became baseless after the district court’s Markman
order” as shown by “the evidence proffered by” the plain-
tiff). Accordingly, we conclude that the District Court
abused its discretion in weighing relevant factors in its ex-
ceptional case analysis.
C. Conclusion
For the foregoing reasons, we vacate the District
Court’s Attorney Fee Order and remand for further pro-
ceedings. In assessing the totality of the circumstances on
remand, the District Court should consider, in a manner
consistent with this opinion, ECT’s manner of litigation
and the objective unreasonableness of ECT’s infringement
claims.
We further note that the District Court applied the in-
correct attorney fee statute. Specifically, the District Court
applied 15 U.S.C. § 1117, J.A. 1267, which provides for the
“award [of] reasonable attorney fees to the prevailing
party” in “exceptional cases” concerning trademark viola-
tions, 15 U.S.C. § 1117(a). Instead, the District Court
should have applied 35 U.S.C. § 285, as the lawsuit in-
volved the sole claim of patent infringement. J.A. 1 (find-
ing independent claim 11 patent ineligible following a
claim of infringement); see 35 U.S.C. § 285 (stating that, in
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14 ELECTRONIC COMMUNICATION v. SHOPPERSCHOICE.COM, LLC
the context of patent infringement remedies, “[t]he court in
exceptional cases may award reasonable attorney fees to
the prevailing party”). Although we acknowledge that the
District Court ultimately applied the proper standard,
J.A. 1627, 1628 (citing Tobinick v. Novella, 884 F.3d 1110,
1118 (11th Cir. 2018) (concluding that the exceptional case
standard pertaining to 35 U.S.C. § 285 applies to 15 U.S.C.
§ 1117)), on remand the District Court should apply § 285
and relevant precedent.
Accordingly, the Attorney Fee Order of the U.S. Dis-
trict Court for the Southern District of Florida is
VACATED AND REMANDED
COSTS
Costs to ShoppersChoice.