In a non-prec opinion in Biax Corp. v. Nvidia Corp., the panel (Dyk-auth; Lourie; Taranto) reversed the district court’s award of section 285 fees and affirmed its denial of sanctions under section 1927. The case was decided before Octane and so had a fun procedural path to get to this point.
The district court had found that the patentee had asserted objectively baseless infringement claims after the district court had construed the claims. Thus, under Brooktree, it awarded fees under Section 285.
There are many cases where courts have awarded fees when, after claim construction, a party has no reasonable basis to contest, or assert, infringement, yet continues to do so. Here, however, the Federal Circuit found there was such a basis, and it reversed the fee award.
What is odd, however, is the panel’s decision not to remand. In its concluding paragraph the court wrote:
Because neither the expert testimony nor the claim construction orders foreclosed Biax’s position and there was nothing unreasonable about Biax’s infringement position, the basis for the district court’s award of fees no longer exists. Thus, even applying the deferential standard of review under Highmark, the district court’s fee award must be set aside. In some cases decided under the old Brooks Furniture standard, we have remanded for the district court to consider whether the case is “exceptional” in light of the new Octane Fitness standard. See, e.g., Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 572 F. App’x 988 (Fed. Cir. 2014). A remand is not necessary here because neither the defendants nor the district court has suggested any basis for awarding fees other than the lack of objective reasonableness, and the resulting bad faith from continuing to litigate an objectively baseless position. Therefore, we reverse rather than vacate the fee award.
This strikes me as odd, since from the case, it appears that the only basis, pre-Octane to seek fee shifting was objective baseless. To not give the defendant the right to assert that, regardless of objective reasonableness, the case was not “ordinary” under Octane seems odd.