Sony Electronics v. Soundview Technologies (D. Conn. 2005) [pdf]
The district court granted summary judgment of non-infringement to the alleged infringers, and that decision was affirmed at the Federal Circuit. Now Soundview, the patentee, has moved to dismiss all pending counterclaims because the patent has expired and, in light of the summary judgment, the remaining counterclaims are moot.
One defendant, however, argued that its declaratory judgment counterclaim seeking a finding of inequitable conduct during reexamination is not moot because it is a basis for an award of attorneys fees under 35 U.S.C. § 285.
Connecticut District Court Judge Janet Bond Arterson determined that the counterclaim should be dismissed because there was no actual controversy remaining that would be sufficient to create subject matter jurisdiction:
Section 285 . . . is not an independent basis for jurisdiction, providing only that "the court in exceptional cases may award reasonable attorney fees to the prevailing party." Thus, Sharp is entitled to seek attorneys fees on the underlying litigation on which Sharp has prevailed, but cannot create more litigation that is otherwise moot merely to create an alternative basis for attorneys fees.