After granting a Rule 12 motion for judgment on the pleadings of invalidity of US Patent No. 6,381,582, and after the Federal Circuit affirmed that judgment without comment, a Delaware District Court found an exceptional case under 35 U.S.C. § 285 and ordered the plaintiff to pay the defendant’s fees and costs. Inventor Holdings, LLC […]
Archive | Exceptional Case
Patent Invalidation under Alice Held Not to Justify Fee Award
By Charles Bieneman on May 5, 2016 in Civil Procedure, Exceptional Case, Litigation, Patentable Subject Matter
A declaratory judgment plaintiff, having successfully invalidated patent claims under 35 U.S.C. § 101 and the Alice case, has lost a motion for its attorney fees under 285 U.S.C. § 285. Clarilogic, Inc. v. FormFree Holdings Corp., No. 3-15-cv-00041 (S. D. Cal. April 27, 2016). The court had earlier granted a motion for summary judgment […]
Plaintiff Stuck with Collateral Judgment of Patent Invalidity Under Alice in More Ways Than One
By Charles Bieneman on April 19, 2016 in Civil Procedure, Exceptional Case, Litigation, Patentable Subject Matter, Software Patents
Not only did collateral estoppel apply from a prior finding of patent invalidity under 35 U.S.C. § 101, but a plaintiff was denied a motion to voluntarily dismiss its claim of patent infringement, the court expressly leaving open the specter of a fee award to the defendant as a prevailing party under 35 U.S.C. § […]
Unreasonable Section 101 Arguments Support “Exceptional Case” Finding and Award of Attorney Fees Against Patent Plaintiff
Based on the plaintiff’s “unreasonable § 101 positions and vexatious litigation strategy,” Judge Gilstrap in the Eastern District of Texas found an exceptional case under 35 U.S.C. § 285, and granted a defense motion for attorney fees in eDekka LLC v. 3Balls.com, Inc., No. 2:15-CV-541 (E.D. Tex. December 17, 2015). At risk of overstating the […]
Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness
By George Schooff on November 13, 2015 in Covered Business Method Patent Review, Exceptional Case, Litigation, Patentable Subject Matter
A California district court recently considered the intersection between the patent-eligibility law of Alice and the fee award standard of Octane Fitness, set against the backdrop of a (mostly) successful challenge to the patent-in-suit’s claims before the Patent Trial and Appeal Board. In Credit Acceptance Corp. v. Westlake Servs., LLC, No. CV 13-01523 SJO (MRWx) […]
Denial of Dispositive Motions Undermined Argument for Exceptional Case
A recent case in which a court refused to find a case exceptional under 35 U.S.C. § 285, and denied a defendant’s motion for fees, demonstrates how Octane Fitness has not greatly shifted the ground in many patent cases. In Ushijima v. Samsung Electronics Co., Ltd., No. A-12-CV-318-LY (W.D. Tex. Jul. 30, 2015), the denial […]
Attorneys’ Fees Awarded in Patent Case Under Octane Fitness Standard
Discovery abuse and a reversal in an inventor’s trial testimony made for an exceptional case under 35 U.S.C. § 285, and therefore warranted an award of attorneys’ fees against a losing plaintiff in Digital Reg of Texas, LLC v. Adobe Systems Inc., Case No. 4:12-cv-01971-CW (N.D. Cal. Mar. 9, 2015). This case provides an example […]
Attorneys’ Fees Awarded in Light of Octane Fitness
A plaintiff had licensed a patent to defendants, including a right to sub-license, but excluded certain uses of the claimed method. The plaintiff then sued the defendants based on those excluded uses. The defendants were awarded attorneys’ fees under 35 U.S.C. § 285 where, among other things, the plaintiff had attempted to enforce the patent […]
Fee Award Under 35 U.S.C. § 285 Supported by Evidence of Subjective Bad Faith and Objective Baselessness
Awards of attorneys fees under 35 U.S.C § 285 may seem difficult to obtain, given the dual requirement of proving a party’s subjective bad faith, as well as the objective baselessness of its position. However, as demonstrated in Gabriel Technologies Corp. v. Qualcomm Inc., No. 2013-1205 (Mar. 18, 2014), some conduct is so egregious that […]
Litigation Misconduct Gives Rise to Exceptional Patent Case
Litigation misconduct, even without a showing of objective baselessness or bad faith, was enough to justify a finding of an exceptional case, and an award of attorneys’ fees under 35 U.S.C. § 285. Monolithic Power Systems, Inc. v. O2 Micro International, Ltd., No. 2012-1221 (Fed. Cir. Aug. 13, 2013). The parties in this litigation had […]