District Court Awards Post-Markman Attorneys’ Fees After Plaintiff Continued to Litigate Claims That Became Baseless in Light of the Court’s Markman Order

Mar 4, 2020

Reading Time : 2 min

Plaintiff asserted 11 patents relating generally to methods of multimedia communications. The court found that eight of those patents claimed unpatentable subject matter and were invalid under 35 U.S.C. § 101. After claim construction the court granted defendant’s motions for summary judgment, finding that the defendant did not infringe one patent and that another was invalid under § 101. Plaintiff stipulated to noninfringement of the final remaining patent but reserved its right to appeal the claim construction issue. It later appealed.

The Federal Circuit affirmed the court’s summary judgment finding and all claim construction determinations but one. But because plaintiff had failed to articulate an infringement position under the affirmed claim constructions, the Federal Circuit had no choice but to remand the case. The parties eventually stipulated to dismissal and defendant moved for attorneys’ fees.

The court noted that an infringement case that is substantively weak when filed can become exceptional if claim construction renders the claims-at-issue baseless. Here, plaintiff’s case was initially weak—its claims relating to eight of the patents were dismissed because the patents were invalid under 35 U.S.C. § 101. But the case was not so extraordinarily weak as to be exceptional at inception. After the Markman order, however, plaintiff should have known that each remaining claim was baseless. Specifically, the court’s later invalidation of the claims of one patent was the “clear and necessary consequence of the claim construction.” And for the claims of the patent for which the court ultimately granted summary judgment of no infringement, plaintiff’s continued infringement theory directly contradicted the court’s Markman order. Instead of dismissing its claims based on these patents,  plaintiff “avoided summary judgment by stipulating to noninfringement, proceeded to appeal without a viable theory of infringement, and then prolonged the case by insisting on remand—caused by [its] own lack of clarity and specificity in the stipulation—without an infringement theory.” Continuing to litigate was, thus, objectively unreasonable and the case was exceptional. The court therefore awarded attorneys’ fees pursuant to 35 U.S.C. § 285.

Practice Tip: In order for a party to recover attorneys’ fees, a case need not be exceptional at inception. A party should re-evaluate whether any asserted claims or defenses become baseless after potentially case dispositive events like claim construction.

Innovation Sciences, LLC v. Amazon.com, Inc., No. 1:16-cv-00861 (E.D. Va. Feb. 18, 2020) (Grady, J.)

Share This Insight

Previous Entries

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

IP Newsflash

May 13, 2025

The Federal Circuit recently affirmed a district court’s holding that patent term extension (PTE) for a reissued patent was properly based on the issue date of the original patent and not that of the reissued patent. The Federal Circuit concluded that, where both the original and reissued patents claimed a drug product under regulatory review, using the issue date of the original patent to calculate PTE comports with both the purpose of the Hatch-Waxman Act and the related statutory context.

...

Read More

IP Newsflash

May 12, 2025

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not persuaded by petitioner’s arguments that a second petition was needed due to alleged claim construction issues or the number, length or scope differences of the challenged claims.

...

Read More

IP Newsflash

May 9, 2025

The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on Petitioner’s Sotera stipulation, and not enough emphasis on the investment in the parallel litigation. Weighing the factors as a whole, the Director determined that institution should be denied.

...

Read More

IP Newsflash

May 9, 2025

In an institution decision following the USPTO’s withdrawal of its Fintiv Memo, the board addressed discretionary denial of an IPR under Fintiv in view of a parallel ITC investigation. The board noted it would not consider the now-rescinded June 2022 memo from then-director Vidal which instructed that the PTAB would not deny institution of an IPR or PGR under Fintiv when the request is based on a parallel ITC investigation. The board conducted a Fintiv analysis in view of the ITC investigation, but ultimately determined that discretionary denial was not warranted in this particular situation.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.