Court rules no legal fees in ‘pocket bra’ patent troll case
Back in 2012, Kyle Bartlow and Mariah Gentry were juniors at the University of Washington’s Foster School of Business, looking to live out the American dream of entrepreneurship. Together, they formed JoeyBra LLC, a company dedicated to making and marketing specially designed women’s undergarments that include pockets on the wings (see the image above.) As the pair describes the item on their website:
Inspired by UW’s vibrant Greek system, JoeyBra was created for women who are constantly on the go and struggle to find a place to put their ID, keys, or phones. From their own personal experience, they know that women hate taking purses to dances, bars, or dance clubs. Leaving these items at home can pose a safety risk, but with JoeyBra women will never have to worry losing or damaging their valuables again.
Things got off to raring start for JoeyBra. A successful KickStarter campaign raised more than $10,000 in seed funding, which was supplemented by another $5,000 award when the company was named a finalist in the Foster School’s annual business plan competition.
Alas, like many fledgling entrepreneurs, Bartlow and Gentry soon discovered the road to riches was bound to have a few potholes. Theirs came in the personage of Mr. Charles Robinson, a British man who in 2001 was granted a patent (D448541) by USPTO for the ornamental design of a brassiere that, similarly, included pockets on the wings. An illustration of his design is below:
Robinson brought an infringement suit in Virginia against both JoeyBra LLC, and Bartlow and Gentry as individuals, seeking a preliminary injunction to bar them from marketing their wares.
Robinson’s basis for seeking an injunction was that it would cause him “irreparable harm,” even though he had never actually brought a product to market in the dozen years that he held the patent. In March 2013, U.S. District Court Judge Norman K. Moon denied the injunction, in part because Robinson could show no material harm, but also because, Moon wrote, “a brief patent search reveals that a pocketed bra is, in fact, not a ‘very novel element.'”
[T]hough the pocket on Defendants’ JoeyBra product is, like Plaintiff’s claimed design, on the side of the bra (rather than the cup), the size, orientation, and accessibility of that feature appear to be substantially different; as a consequence, and more significantly, the carrying capacity and overall functionality of the allegedly infringing product also appear substantially different. The pocket on Plaintiff’s design appears to be fit for a key, and after twelve years since receiving his patent, he does not have a product on the market. Defendants’ JoeyBra product, on the other hand, holds an iPhone and credit cards, among other items.
Moon also granted Bartlow and Gentry a motion to dismiss the claims against them personally, on jurisdictional grounds, though he would allow the case against JoeyBra to continue (three of the KickStarter funders lived in Virginia, which was enough to establish Robinson’s jurisdictional claim.)
Robinson filed a motion to reconsider, which Moon denied in May 2013. Following that ruling, there was no further action in the case until it was ultimately dismissed (but without prejudice) in March 2014 for “failure to prosecute.”
Having spent two crucial years of their young entrepreneurial career fending off this spurious claim, Bartlow and Gentry attempted to recover their legal fees. Specifically, under Title 35, Section 285 of the U.S. Code, “the court in exceptional cases may award reasonable attorney fees to the prevailing party.”
Alas, in a new order handed down June 3, Judge Moon broke the bad news: just because you won the case doesn’t mean you “prevailed.”
Moon noted that in only one case, Velez v. Portfolio Recovery Assoc., has a federal court determined that a party granted a motion to dismiss on jurisdictional meets the definition of a “prevailing party.”
What’s more, the Fourth Circuit has ruled that a party granted a preliminary injunction is not a “prevailing party,” because consideration of the merits of such cases are “necessarily abbreviated.” The Fourth Circuit has not ruled on whether denial of a preliminary injunction could render one a “prevailing party,” but the Tenth Circuit has ruled that it does not.
Of course, even if JoeyBra and its principals were declared “prevailing parties,” they’d face a whole other hurdle in establishing that their case met the definition of “exceptional.” In a unanimous decision in April in the case Octane Fitness LLC v. ICON Health & Fitness Inc., the U.S. Supreme Court ruled that the exceptionality test for award of attorney fees had set too high a bar, remanding the matter back to the Federal Circuit.
These are, of course, precisely the kinds of issues that were to be addressed by the patent reform bill that Senate Judiciary Committee Chairman Patrick Leahy, D-Vt., has tabled indefinitely. Perhaps one day Congress really will get back to work to resolve them.
Until then, JoeyBra isn’t taking any chances. They’ve applied for a patent of their own.
