Alston & Bird LLP advised Diebold Nixdorf Inc. on the deal.
Diebold Nixdorf Inc. won a significant victory over competitor Nautilus Hyosung in a patent dispute in Texas federal court.
Ruling in the matter, Judge David C. Godbey of the U.S. District Court for the Northern District of Texas determined that the substantive weakness of Hyosung’s litigation position was exceptional and granted Diebold an award of attorneys’ fees in the amount of $342,250.
Notably, Hyosung failed to produce any new, material evidence that would justify a different result than a prior unanimous ruling from the Court of Appeals for the Federal Circuit, which found that all the asserted claims of the patent at issue were invalid as indefinite. In that ruling, the appeals court held that the term “cheque standby unit” recited in Hyosung’s U.S. Patent Number 8,523,235 was a means-plus-function term subject to the requirements of Section 112, paragraph 6 of the Patent Act. The panel then determined that the asserted claims were invalid as indefinite because the patent lacked the necessary corresponding structure for performing the claimed function of the means-plus-function term.
The award of attorneys’ fees against Hyosung is the most recent Diebold victory in a dispute spanning nearly six years across both the federal courts and the International Trade Commission (ITC). One of the world’s leading innovators in financial self-service technology, Diebold actively protects its intellectual property rights and is involved in one remaining case against Hyosung in Delaware district court that it brought for willful infringement of two of its patents by Hyosung. Diebold seeks treble damages and attorneys’ fees for Hyosung’s manufacture and sale of infringing ATMs notwithstanding its prior knowledge of Diebold’s innovative features directed to check sensing. The ITC previously ruled against Hyosung on the underlying infringement issues in the case.
The case is Hyosung TNS, Inc., v. Diebold Nixdorf, Inc., 3:16-CV—364-N, U.S. District Court for the Northern District of Texas.
Representing Diebold in the matter are Alston & Bird partners Keith Broyles (Picture) and David Frist, senior associates Joshua Weeks and Lindsay Church, and associates Max Rubinson and Marcos Alvarez (Intellectual Property Litigation).
Involved fees earner: Marcos Alvarez – Alston & Bird LLP; Keith Broyles – Alston & Bird LLP; Lindsay Church – Alston & Bird LLP; David Frist – Alston & Bird LLP; Max Rubinson – Alston & Bird LLP; Joshua Weeks – Alston & Bird LLP;
Law Firms: Alston & Bird LLP;
Clients: Diebold Nixdorf Inc.;