Advanced Ground Info. Sys., Inc. v. Life360, Inc. (S.D. Fla. Civ. A. No. 14-cv-80651), is an interesting case . The patent-in-suit covered some sort of smart phone app (it’s not clear what). The key dispute over infringement centered on whether the end user, alone, performed each step of the patented method. Of course, a method claim cannot be infringed without preponderant evidence of direct infringement by someone.
Here, the asserted method claims survived the accused infringer’s motion for summary judgment of non-infringement, but were found by the jury to be not infringed. Even though the case got to a jury, the district court awarded fees to the prevailing accused infringer, rejecting the argument that simply because the case got to trial meant it was not subject to shifting.
Instead, the court emphasized that after Akamai and the district court’s claim construction, it had been clear that there could be no infringement. To oppose fees, the accused infringer pointed out that the court had denied the defendant’s motion for summary judgment after both Akamai and claim construction.
Why then, did the district judge deny the motion for summary judgment?
In granting fees in its November 30, 2015 order, the judge explained that he had “considered granting” the motion but had not done so because of the patentee’s explanation of how the app worked. Specifically, the judge stated that he denied summary judgment of non-infringement of the method claims based on the patentee’s argument that when the end user used the app was used, the app “automatically,” performed the remaining steps and so directly infringed the method claims. That turned out to be untrue, and so the denial of summary judgment, alone, was insufficient to avoid an exceptional case finding.
In addition, the judge in granting fees also mentioned that the patentee had never sold any products, sued a start-up that had never made a profit, and yet the patentee argued that it had suffered irreparable harm. Given the facts, the judge awarded fees from claim construction onward.
The lessons are several, but not unusual or new. One is obviously to have a viable infringement claim and evidence of it; lawyer argument is not evidence. The other is to keep in mind that, post-Octane it is important to evaluate infringement and other arguments carefully after claim construction (and any other similar event) and advise the client on, not just whether the case is meritorious, but whether it is marginally so and thus continued litigation puts the client at risk of fee shifting.