Energy Heating, LLC v. Heat On-The-Fly, LLC, No. 20-2038 (Fed. Cir. 2021)Annotate this Case
The district court found HOTF’s patent, which relates to a “method and apparatus for the continuous preparation of heated water flow for use in hydraulic fracturing” (fracking), unenforceable due to inequitable conduct. The court found by clear and convincing evidence that the patent would not have been issued but for HOTF’s deliberate decision to withhold information from the Patent Office information about substantial on-sale and public uses of the claimed invention before the patent’s critical date, and that it withheld with an intent to deceive. The jury found that HOTF tortiously interfered with Energy’s business when it represented in bad faith that it held a valid patent. The court denied attorneys’ fees under 35 U.S.C. 285. The Federal Circuit remanded on that issue alone.
On remand, the district court found the case to be exceptional and awarded attorneys’ fees. The Federal Circuit affirmed, citing findings that “HOTF litigated the case in an unreasonable manner by persisting in its positions,” that “[t]he number of undisclosed prior sales and the amounts HOTF received from those prior sales constitute affirmative egregious conduct” and that HOTF “pursued claims of infringement without any apparent attempt to minimize litigation costs” “despite [its] knowledge that its patent was invalid.”