Harrison, New York – Universal Remote Control, Inc. (“URC”)
announced today that the U.S. District Court for the Central District of California
awarded URC over $4.6 million in requested attorney’s fees and costs stemming from a
failed patent infringement action filed by Universal Electronics, Inc. (“UEI”).
This litigation began in March 2012 when UEI accused URC of infringing four of UEI’s
patents. Over the course of the proceedings, which concluded with a jury trial and
verdict in URC’s favor on all issues tried, all of the claims that had been asserted against
URC were dismissed on various and multiple grounds. In addition to the district court
litigation, URC prevailed before the Patent Trademark & Appeal Board in an Inter Partes
review proceeding (also called an “IPR”) against one of UEI’s patents, which has now
been held invalid by the Patent Office based on a publication already in the public
domain at the time of that patent’s application. The net result is that all four of UEI’s
asserted patents have been held either invalid, not infringed, unenforceable, and/or
subject to no damages claims.
Following the success at the jury trial, URC asked the Court to declare this case
“exceptional” under the patent law and award URC its attorney’s fees and costs for its
successful defense. On March 10, 2015, the Court granted URC’s fee request for those
patent claims found exceptional. After further briefing on the exact amount of fees and
costs at issue, on September 4, 2015, the Court awarded URC over $4.6 million in fees
and costs against UEI.
In its September 4 Order, the Court held that the fee award “is appropriate given the
amount at stake, the complexity of the issues, and the fact that the resolution of certain
issues reflected significant difficulties unnecessarily caused by Plaintiff [UEI].” The
Court further indicated that it had previously “determined, for example, that ‘this
litigation was at least in part motivated by Plaintiff’s desire for ‘payback’ for Defendant’s
successful competition in the marketplace,’ that Plaintiff failed to adequately review its
own material concerning marking before filing suit, that it engaged in discovery
gamesmanship to obscure such failing, and that Plaintiff engaged in ‘troubling’ conduct
concerning a petition for correction of inventorship.” With regard to this inventorship
issue, the Court had earlier ruled in March 2015 that “Plaintiff could not provide any
corroboration of Darbee’s purported inventive contribution.” In this September 4 Order,
the Court noted that the fees requested by URC “reflect[] adequate work that led to a
favorable outcome for Defendant.”
The Court awarded over $4.1 million in attorney’s fees and over $475,000 in expenses, for
a total award of over $4.6 million. Based on public information, this appears to be one of
the most significant fee awards in a patent lawsuit since the U.S. Supreme Court clarified
the standard for awarding such fees in the 2014 Octane case.
URC is a high technology, cutting edge company that develops and manufactures control
and home automation products for the cable, retail and custom markets. URC’s current
lineup includes home theatre products such as multi-zone amplifiers, streaming network
players, and whole house audio/video solutions, and also lighting and climate control,
surveillance cameras, in-wall touch screen controllers and home automation systems.
URC respects the intellectual property rights of others. URC believes, however, that
products and publications already in the public domain cannot and should not be patented
by third parties as their own inventions. URC continues to believe that the proper place
for competition is in the marketplace, not in court, by serving its customers well.
URC was represented at trial by Sidley Austin LLP, led by partners Peter Kang, Sam
Miller, Ted Chandler, and Teague Donahey. Sidley partner Peter Kang argued the
successful motion for attorney’s fees to the Court for URC. URC was also represented
throughout this litigation by Ostrolenk Faber LLP led by partners Douglas A. Miro and
Michael Hurley.
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