Ortiz & Associates Consulting, LLC v. Vizio, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ORTIZ & ASSOCIATES CONSULTING, LLC,
Plaintiff-Appellant
v.
VIZIO, INC.,
Defendant-Appellee
______________________
2024-1783
______________________
Appeal from the United States District Court for the
Northern District of Texas in No. 3:23-cv-00791-N, Judge
David C. Godbey.
______________________
Decided: December 17, 2025
______________________
WILLIAM PETERSON RAMEY, III, Ramey LLP, Houston,
TX, argued for plaintiff-appellant.
STEVEN WAYNE HARTSELL, Skiermont Derby LLP, Dal-
las, TX, argued for defendant-appellee. Also represented
by PAUL SKIERMONT; REX HWANG, Los Angeles, CA.
______________________
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 2
Before TARANTO, BRYSON, and CUNNINGHAM, Circuit
Judges.
BRYSON, Circuit Judge.
This patent infringement action was brought by Ortiz
& Associates Consulting, LLC (“Ortiz”) against Vizio, Inc.
After the district court granted Vizio’s motion to dismiss
Ortiz’s first amended complaint, Vizio filed a motion for at-
torney fees under 35 U.S.C. § 285, which the district court
granted. For the reasons set forth below, we affirm.
I
Ortiz is the assignee of U.S. Patent Nos. 9,147,299 (“the
’299 Patent”) and 9,549,285 (“the ’285 patent”), the two pa-
tents asserted against Vizio in this case. At the time Ortiz
filed its complaint, both patents had expired, so Ortiz’s
claim for damages was limited, at most, to damages that
accrued during the pre-suit period when the patents were
in force.
Vizio filed a motion to dismiss the complaint, arguing
inter alia that Ortiz had failed to plead compliance with the
patent marking statute, 35 U.S.C. § 287. Because compli-
ance with the marking statute is normally a prerequisite
for obtaining pre-suit infringement damages for products
sold by an accused infringer, Vizio argued in its motion to
dismiss that Ortiz had no right to damages for pre-suit in-
fringement and thus had not presented any theory on
which it was entitled to relief. J.A. 140–70.
In response, Ortiz filed an amended complaint in which
it dropped some of its claims. But Ortiz did not plead com-
pliance with section 287 or otherwise address Vizio’s argu-
ment that the failure to comply with the requirements of
section 287 required dismissal of the complaint. J.A. 312–
73. Accordingly, Vizio filed a second motion to dismiss, re-
asserting its argument that Ortiz’s failure to comply with
section 287 was a ground for dismissal. J.A. 395–425.
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 3
The district court granted Vizio’s motion and dismissed
Ortiz’s complaint with prejudice. J.A. 11–20. The court
found that there were two independent grounds to dismiss
the complaint, both resulting from Ortiz’s failure to comply
with the marking statute.
First, the court found that Panasonic Corp. of North
America and Roku, Inc., were licensees of the asserted pa-
tents because of Ortiz’s previous dismissal of lawsuits Ortiz
brought against Panasonic and Roku alleging infringement
of one or both of the asserted patents.1 The district court
found that those “dismissals with prejudice of patent in-
fringement claims function[ed] as the equivalent of a li-
cense” even when there was no explicit licensing agreement
entered in the record in those cases. J.A. 18. The district
court ruled that Roku’s and Panasonic’s sale of licensed pa-
tented articles triggered the marking statute, and that
“Ortiz was responsible for making reasonable efforts to en-
sure the patented articles were marked and pleading com-
pliance with the marking statute.” J.A. 18.
Second, the district court found that even if those dis-
missals did not constitute licenses as such, Ortiz’s “failure
to plead compliance with the marking statute provides an
independent basis for dismissal.” J.A. 18. The district
court noted that Ortiz had the opportunity to plead compli-
ance with the marking statute both in its original com-
plaint and in its first amended complaint, but that it failed
to do so, even after Vizio specifically alleged a failure to
mark in its first motion to dismiss. J.A. 19.
Following the dismissal of Ortiz’s first amended com-
plaint, Vizio filed a motion for attorney fees under 35
1 Ortiz & Assocs. Consulting, LLC v. Roku, Inc., C.A.
No. 1:18-cv-01265-MN, Dkt. Nos. 19, 20 (D. Del. 2019);
Ortiz & Assocs. Consulting, LLC v. Panasonic Corp. of N.
Am., C.A. No. 1:19-cv-01921, Dkt. No. 11 (D. Del. 2020).
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 4
U.S.C. § 285 as well as 28 U.S.C. § 1927 and the court’s in-
herent equitable powers. J.A. 597–620. The district court
held that the case was exceptional and granted fees under
section 285, but it declined to award fees under section
1927 or the court’s inherent powers. J.A. 1–10.
The court found that the totality of the circumstances
supported a finding that the case was exceptional within
the meaning of section 285 because (1) “Ortiz’s position was
substantively weak given it knew, or should have known,
that its complaint stated no viable damages theory” in that
its expired patents “could not give rise to future damages,
and Ortiz was apprised of the need to plead compliance
with 35 U.S.C. § 287(a) to support its claim for pre-suit
damages” but did not do so; (2) Ortiz’s “litigation conduct
was unreasonable in that it failed to comply with the
Court’s discovery deadlines, including deadlines to serve
infringement contentions and discovery requests”; (3) Ortiz
“made a settlement demand unrelated to the merits of [the]
litigation”; and (4) Ortiz had a “history of infringement ac-
tions involving the Asserted Patents that have been volun-
tarily dismissed or were dismissed for failure to state a
claim before any discovery commenced.” J.A. 6–7. How-
ever, the district court found that Ortiz’s counsel’s manner
of conducting the litigation did not rise to the level of mis-
conduct sufficient to justify an award of fees under section
1927 or the court’s inherent power. J.A. 8–9.
II
Section 285 provides that a district court “may award
reasonable attorney fees to the prevailing party” in an “ex-
ceptional” patent case. In Octane Fitness, LLC v. ICON
Health & Fitness, Inc., 572 U.S. 545, 553 (2014), the Su-
preme Court pointed out that section 285 “imposes one and
only one constraint on district courts’ discretion to award
attorney’s fees in patent litigation: The power is reserved
for ‘exceptional’ cases.”
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 5
The Court in Octane Fitness explained that “an ‘excep-
tional’ 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 unreasonable manner in which the case
was litigated.” 572 U.S. at 554. District courts are directed
to consider the totality of the circumstances in making a
case-by-case determination of whether a case is “excep-
tional,” and are accorded broad discretion in making that
determination. Id.
A district court may award fees in a case in which a
party’s unreasonable conduct, “while not necessarily inde-
pendently sanctionable—is nonetheless so ‘exceptional’ as
to justify an award of fees.” Octane Fitness, 572 U.S. at
555; Lumen View Tech. LLC v. Findthebest.com, Inc., 811
F.3d 479, 483 (Fed. Cir. 2016) (“Even if Lumen View’s liti-
gation conduct was not quite sanctionable, the court rea-
sonably determined that the case was exceptional.”).
Conversely, certain conduct may be sanctionable yet not
rise to the level of rendering the overall case exceptional.
Khan v. Hemosphere Inc., 825 F. App’x 762, 773 (Fed. Cir.
2020) (affirming the district court’s denial of fees under sec-
tion 285 for conduct that “was largely identical to the con-
duct” for which the parties had already been sanctioned).
A district court’s exceptional-case determination is re-
viewed on appeal for abuse of discretion. Highmark Inc. v.
Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563–64
(2014). District courts are afforded “broad discretion” un-
der a “generous standard” in making that determination.
In re Rembrandt Techs. LP Pat. Litig.¸ 899 F.3d 1254, 1277
(Fed. Cir. 2018); see EscapeX IP, LLC v. Google LLC,
No. 2024-1201, 2025 WL 3274847 (Fed. Cir. Nov. 25, 2025).
III
Ortiz raises a number of arguments on appeal. Some
are directed to the district court’s holding that this case
was exceptional, while others challenge the district court’s
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 6
underlying decision granting Vizio’s motion to dismiss. Be-
cause Ortiz did not file a timely appeal from the dismissal
order, we will not disturb the district court’s dismissal of
the complaint with prejudice.2
We conclude that the district court did not abuse its
discretion in determining that this case was exceptional,
both because Ortiz’s litigation position was substantively
weak and because its litigation conduct was unreasonable.
A
The district court determined that Ortiz had a “sub-
stantively weak” litigation position because Ortiz “knew, or
should have known, that its complaint stated no viable
damages theory,” yet it failed to correct that deficiency in
its first amended complaint, despite being apprised of the
need to plead compliance with the patent marking statute,
35 U.S.C. § 287(a), to support its claim for pre-suit dam-
ages in Vizio’s first motion to dismiss. J.A. 6.
The district court did not abuse its discretion in finding
that Ortiz failed to allege any basis for arguing that it was
entitled to damages. Ortiz was informed of that deficiency
2 Ortiz’s initial Notice of Appeal and Amended Notice
of Appeal made no reference to the order of dismissal and
final judgment, but were limited to the district court’s
grant of attorney fees. Ortiz’s Second Amended Notice of
Appeal purported, for the first time, to appeal the district
court’s order dismissing the case with prejudice and enter-
ing final judgment. ECF No. 1 at 5. However, that notice
of appeal was filed nearly five months after the dismissal
order and final judgment were issued, which was long after
the deadline to file an appeal from the dismissal and judg-
ment had passed. Ortiz’s brief acknowledges that Ortiz
chose not to appeal the dismissal and judgment, and that
the merits of the dismissal order are not at issue in this
appeal. Appellant’s Br. at 3, 17.
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 7
in its complaint when Vizio filed its first motion to dismiss,
yet Ortiz failed to take any steps in its first amended com-
plaint to correct the problem or indicate why it was not a
fatal defect. That failure highlights the weakness of Ortiz’s
litigating position.
In response to the district court’s ruling on the marking
issue, Ortiz argues (1) that because it does not produce any
articles that practice its asserted patents, it had no obliga-
tions under the marking statute; (2) that the Panasonic
and Roku dismissals with prejudice do not constitute pa-
tent licenses; and (3) that if the court had allowed it to file
a second amended complaint, Ortiz would have amended
its complaint to address the marking issue.
For more than a century and a half, patent law has re-
quired that a patentee either mark patented articles or pro-
vide notice to an accused infringer as a prerequisite to
recovering damages for the sale of infringing articles. Dun-
lap v. Schofield, 152 U.S. 244, 247–48 (1894) (“[T]he pa-
tentee or his assignee, if he makes or sells the article
patented, cannot recover damages against infringers of the
patent, unless he has given notice of his right, either to the
whole public, by marking his article ‘Patented,’ or to the
particular defendants, by informing them of his patent,
and of their infringement of it.”); see Providence Rubber Co.
v. Goodyear, 76 U.S. 788 (1869) (decided under the Act of
Mar. 2, 1861, ch. 88, 12 Stat. 249); see also Act of Aug. 29,
1842, ch. 263 § 6, 5 Stat. 544–45 (1842).
The patentee is responsible for marking or providing
notice, and whether he has done so “is a matter peculiarly
within his own knowledge.” Dunlap, 152 U.S. at 248. The
patentee bears the burden of both pleading and proving
that it complied with section 287(a)’s marking require-
ments. Arctic Cat Inc. v. Bombardier Recreational Prods.
Inc.¸ 876 F.3d 1350, 1366 (Fed. Cir. 2017) (citing Maxwell
v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996), and
Dunlap, 152 U.S. at 248). “A patentee’s licensees must also
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 8
comply with § 287, because the statute extends to ‘persons
making or selling any patented article for or under [the pa-
tentee].’” Arctic Cat, 876 F.3d at 1366 (quoting Maxwell,
86 F.3d at 1111). Thus, the fact that Ortiz does not make
and sell products does not relieve it of the duty to ensure
that any products made by its licensees that practice its
patents are marked, or to explain why he does not have
such a duty.
As for Ortiz’s argument that the with-prejudice dismis-
sals of Ortiz’s actions against Roku and Panasonic did not
constitute licenses that triggered the marking require-
ments, Ortiz could have argued that those settlements
merely resolved Ortiz’s claims of past infringement by
those companies and did not give them the right to practice
the asserted patents in the future. On that theory, Ortiz
could have responded to Vizio’s motion to dismiss by argu-
ing that because Roku and Panasonic were not licensed to
make and sell infringing products in the future, the mark-
ing statute imposed no obligation on Ortiz to make an effort
to require Roku and Panasonic to mark the products Ortiz
had accused of infringing its patents. But Ortiz did not
make that argument in the district court and has not made
that argument in this court.
Finally, Ortiz’s argument that it would have complied
with the marking requirement if the court had allowed it
to file a second amended complaint is not convincing. In
its first motion to dismiss, Vizio cited the Arctic Cat case
and directed Ortiz to the portions of the court’s opinion in
that case requiring a plaintiff to plead that the marking
statute was satisfied and making clear that the marking
statute applies to licensees. J.A. 161–66. Ortiz later
amended its complaint, but it made no effort to plead com-
pliance with the marking statute despite being made
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 9
aware that it had the burden to do so.3 Nor did Ortiz plead
that it was not subject to the marking requirement for rea-
sons such as that the Roku and Panasonic products did not
practice the asserted patents and did not need to be
marked, or that Ortiz had made reasonable efforts to re-
quire Roku and Panasonic to mark their products, but they
had refused to do so. Ortiz thus had the opportunity to cor-
rect the marking problem, but it failed to do so.4 Its
3 Vizio’s first motion to dismiss (J.A. 140–70) cited
Arctic Cat and summarized the caselaw stating that the
burden was on Ortiz to plead marking compliance, and that
the marking statute applies even when a licensee, and not
the patentee itself, produces the allegedly unmarked prod-
ucts. See J.A. 161–66. Ortiz made no changes relevant to
marking in its amended complaint, and its response to that
argument was simply to wait until after Vizio filed its sec-
ond motion to dismiss to assert that because Ortiz does not
make or sell a patented article, it “need not comply with
Section 287.” J.A. 377.
4 Ortiz argues that it had no obligations under the
marking statute because it could have dropped its appa-
ratus claims and proceeded only on its method claims,
which do not trigger the marking requirement. There are
two problems with that argument. First, Ortiz did not drop
its apparatus claims; second, this court has held that a pa-
tentee cannot avoid its marking obligations even by dis-
claiming claims during litigation. Rembrandt Wireless
Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1383 (Fed.
Cir. 2017). There is also no force to Ortiz’s argument that
the marking statute does not apply to non-practicing enti-
ties such as Ortiz. In Maxwell v. J. Baker, Inc., for exam-
ple, this court held that the marking requirement applied
to a non-practicing patentee who had licensed a third party
to produce goods under her patent. The court found that
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 10
contention that it was entitled to a third opportunity to do
so is not persuasive.
B
The district court also did not abuse its discretion in
finding that Ortiz litigated this case in an unreasonable
manner.
1
The district court pointed out that Ortiz “failed to com-
ply with the Court’s discovery deadlines, including dead-
lines to serve infringement contentions and discovery
requests.” J.A. 6. Ortiz does not dispute that it failed to
comply with the district court’s discovery deadlines. In-
stead, Ortiz asserts that it chose not to comply with the
court-imposed deadlines as a strategy to avoid having to
devote resources to the case before the motion to dismiss
was decided. J.A. 796 (Declaration of William P. Ramey,
III) (“Ortiz and its counsel planned to serve discovery and
correct any outstanding issues after the Court ruled on the
motion to dismiss”); Appellant’s Br. at 34 (“Ortiz’s legal
strategy was to get past the motion to dismiss so no party
was burdened with excessive fees prior to serving discovery
and correcting its disclosures.”). Notably, at no point did
Ortiz file a motion to stay the case or to modify the case
schedule, even though the district court’s scheduling order
made clear (in underlined text) that “[t]he pendency of a
Rule 12 motion to dismiss does not stay the case unless the
Court explicitly so orders.” J.A. 563.
Ortiz argues that its conduct regarding discovery was
reasonable because discovery had not closed by the time
the case was dismissed, and Ortiz planned to correct its
she had satisfied the marking requirement by making rea-
sonable efforts to ensure that her licensee complied with
the marking requirement. 86 F.3d at 1111–12.
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 11
noncompliance with its litigation obligations at some point
in the future. Appellant’s Br. 34. Ortiz’s argument is es-
sentially that a party should be free to ignore court-im-
posed deadlines if it believes it would be more economical
to do so, as long as it intends to make up for its noncompli-
ance at some later time. Ortiz cites no authority to support
its novel argument. To the contrary, the Federal Rules of
Civil Procedure make clear that district courts have the au-
thority to establish and enforce case schedules and dead-
lines, including pretrial orders, and that parties may not
deviate from those deadlines on their own volition. See Fed.
R. Civ. P. 16 (requiring the district court to issue a sched-
uling order and permitting imposition of sanctions for a
party’s failure to obey the scheduling order); González-Ri-
vera v. Centro Médico Del Turabo, Inc., 931 F.3d 23, 25 (1st
Cir. 2019) (“Scheduling orders are essential tools for mod-
ern-day case management, and litigants flout such orders
at their peril.”).
The district court did not err by taking Ortiz’s non-com-
pliance with its discovery obligations into account in find-
ing that Ortiz had litigated unreasonably. See Blackbird
Tech LLC v. Health In Motion LLC, 944 F.3d 910, 917 (Fed.
Cir. 2019). While Ortiz argues that its conduct should have
been evaluated under Rule 37 of the Federal Rules of Civil
Procedure rather than under section 285, the fact that its
behavior may have been separately sanctionable under
other authority does not make its conduct immune from
consideration in awarding attorney fees under section 285.
PS Prods. Inc. v. Panther Trading Co., 122 F.4th 893, 898
(Fed. Cir. 2024).
2
The district court also did not err by considering, as
part of its “exceptional case” analysis, that Ortiz had filed
a number of infringement actions involving the asserted
patents that were dismissed voluntarily or for failure to
state a claim before any discovery commenced, and that it
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 12
had made a settlement demand in this case that was below
the cost of defense. J.A. 7–8.
This court has explained that “filing a large number of
suits does not, by itself, justify an inference of . . . an im-
proper motive,” Thermolife Int’l LLC v. GNC Corp., 922
F.3d 1347, 1363 (Fed. Cir. 2019), and that “[t]he mere ex-
istence of these other suits does not mandate negative in-
ferences about the merits or purposes of this suit,” SFA
Sys., LLC v. Newegg, Inc., 793 F.3d 1344, 1351 (Fed. Cir.
2015).
With that said, we have recognized that “a pattern of
litigation abuses characterized by the repeated filing of pa-
tent 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 de-
termination under § 285.” Id. at 1350. In particular, we
have upheld fee awards: against a patentee who “ex-
ploit[ed] the high cost to defend complex litigation to ex-
tract a nuisance value settlement” from the defendant,
Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1326–27
(Fed. Cir. 2011); against a patentee who “‘made multiple
settlement demands that were far less than the anticipated
cost of defense,’ i.e., nuisance value settlement offers,”
Blackbird, 944 F.3d at 916–17; and against a patentee
whose “motivation for filing suit was to extract a nuisance
settlement” and whose “‘predatory strategy’ of baseless lit-
igation showed the need for deterrence,” Lumen View, 811
F.3d at 481–83.
The district court found that Ortiz has “filed and vol-
untarily dismissed with prejudice a number of cases involv-
ing the Asserted Patents before or at the motion to dismiss
stage.” J.A. 7. In addition, while Ortiz contends that its
$149,000 settlement demand was not a “nuisance value”
settlement offer, the district court found that the
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ORTIZ & ASSOCIATES CONSULTING, LLC v. VIZIO, INC. 13
settlement demand was “below the cost of defense,” J.A. 8,
and Ortiz has not challenged that finding.5
We have previously ruled that “[a]sserting seemingly
low damages against multiple defendants—or settling with
defendants for less than the cost of litigation—does not nec-
essarily make a case ‘exceptional’ under § 285.” Ad-
justaCam, LLC v. Newegg, Inc., 861 F.3d 1353, 1361 (Fed.
Cir. 2017). However, in cases in which there is other evi-
dence of unreasonable litigation conduct, district courts
may consider the nuisance value of the plaintiffs’ settle-
ment demands when engaging in a totality-of-the-circum-
stances analysis. Id. at 1361–62; Blackbird, 944 F.3d at
916–17. Based on all the factors considered by the district
court in making its “exceptional case” finding, we conclude
that the court did not abuse its discretion in finding that
this case was “exceptional” within the meaning of section
285.
We have considered Ortiz’s remaining arguments and
find them unpersuasive. We affirm the district court’s rul-
ing granting an award of attorney fees to Vizio.
AFFIRMED
5 Ortiz’s argument as to why its settlement demand
was not a “nuisance value” demand is that $149,000 is
more than twice the median family income in the United
States. Appellant’s Br. 9, 38. That argument misses the
point. A nuisance value settlement demand is a demand
that is less than it would cost the opposing party to defend
against the action, and Ortiz has not suggested that a com-
prehensive defense to a patent infringement action could
be mounted for less than $149,000.
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