Section 285 Fee Award: Whole Case Must be “Exceptional;” Exceptional Portion is Insufficient

by Dennis Crouch

Intellectual Ventures I LLC v. Trend Micro Inc. (Fed. Cir. 2019) [IVFeeAward]

IV sued Trend Micro back in 2010 for infringing its U.S. Patent Nos. 5,987,610, 6,073,142, 6,460,050, and 7,506,155.   After substantial back and forth, we eventually learned that the patents are invalid as directed toward abstract ideas. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016).  On motion, the Judge Stark then awarded attorney fees to Trend Micro based upon the changed testimony of IV’s expert witness at trial in the parallel Symantec case.

Ruling from the bench, the … district court concluded that Intellectual Ventures’s conduct was exceptional “solely with respect to this collection of circumstances regarding [its expert’s] changed testimony.” Considering “whether the case overall is exceptional,” however, the district court expressly “f[ou]nd it was not.” The district court also concluded that “it would be wrong to say that [Intellectual Ventures’s] case was objectively unreasonable.”

Slip. Op.  The district court ruled that the case is not “exceptional” but went ahead and awarded attorney fees. The problem is that 35 U.S.C. § 285 expressly limits attorney fee awards to “exceptional cases.”

The court in exceptional cases may award reasonable attorney fees to the prevailing party.

35 U.S.C. § 285.  On appeal, the Federal Circuit has vacated and remanded — holding that the district court erred in its analysis.  It is improper to find that the case is not exceptional and also award attorney fees under Section 285.

A portion but not the Whole: The district court did find that a discrete portion of IV’s litigation misconduct was improper and exceptional.  However, the district court ultimately concluded that discrete misconduct did not taint the case enough to render the whole “exceptional.”  On appeal, the Federal Circuit found that Section 285 attorney fees are only available when the case as a whole is exceptional.

Instead of determining whether the case was exceptional, it appears that the district court may have focused on whether one discrete portion of the case stood out…. This is not the appropriate analysis. Section 285 gives the district court discretion to depart from the American Rule and award attorney fees “in exceptional cases.” Accordingly, under the statute, the district court in this case should have determined whether the circumstances surrounding the expert’s changed opinion were such that, when considered as part of the totality of circumstances in the case, the case stands out as exceptional.

Slip Op.  A “district court has discretion, in an appropriate case, to find a case exceptional based on a single, isolated act.”  Such as finding must also consider the case as a whole and the totality of circumstances. Here, the district court did not make such a conclusion — and in fact concluded that the case was not exceptional.

 

20 thoughts on “Section 285 Fee Award: Whole Case Must be “Exceptional;” Exceptional Portion is Insufficient

  1. 5

    This case is not Section 285 exceptional.

    Sounds like (haven’t read the case record) the judge correctly found the expert’s materially changed opinion infirm.

    If anyone, the expert should be sanctioned; perhaps by having his expert fee disgorged + an additional 5 – 10k fee. And/or barred from acting as an expert for some period of time.

    1. 5.1

      Why not barred forever?

    2. 5.2

      What authority does the Court have to sanction an expert witness? Except for actions that occur in the Courtroom, the most that the Court can do is to exclude the expert’s testimony in that particular case and issue an opinion criticizing the expert. The latter will effectively make the expert witness unemployable because this criticizing opinion would be used during any cross-examination.

      1. 5.2.1

        What about the part about testifying under oath under penalty of perjury?

        1. 5.2.1.1

          Because perjury is a crime, it would be handled by the DOJ (possibly based on a referral from the Court). I suppose that perjury is also contempt of court, but I don’t think that the court would be able to impose disgorgement and a restraining order based on it.

          1. 5.2.1.1.1

            So maybe there’s more the court can do beyond excluding the expert’s testimony?

  2. 4

    Time to fire up that second round of impeachment articles so Spraytan McR@-cyst Bttwipe can be the first twice-impeached Pwezident.

    Reminder: if you voted for this gaping r@-ping @-h0le or his diseased party, you’re a total piece of sh-t excuse for a human being. Let the shaming begin!

    1. 4.1

      Please find an appropriate forum.

      1. 4.1.1

        Please find a better t-rd to defend, Bildo, you p@-thetic, hypocritical glibertarian dweeb.

        Or just admit that you really like fawning before the feet of rich white r@-cyst criminal pigs, no matter what. Go ahead. Be proud!

        1. 4.1.1.1

          You confuse taking issue with your non-patent law rants as some type of “defense.”

          The only defense that you may accuse me of is defense of the integrity of this blog as a patent law blog.

          That you are incapable or unwilling to recognize that is just another Trumpism of yours.

    2. 4.2

      I just wanted to stop by to thank MM for another 2k in value generated from his work today. THANK YOU MM!

      1. 4.2.1

        Ok. I’ll bite. How is he making you money?

        1. 4.2.1.1

          Never mind about the markets. He’s also helping getting the Prez re-elected. Part of his plan?

          1. 4.2.1.1.1

            “He’s also helping getting the Prez re-elected. Part of his plan?”

            There’s almost a 100% chance. You’ve got to vote Trump as annoying as MM and his bruhs are.

        2. 4.2.1.2

          MM was moaning the other day about his raison d’ etre (the most important reason or purpose for someone or something’s existence) was to make money for rich whitey. It drives him nuts to know that “rich whitey” is profiting off of him. The markets capture value from his parent corp no doubt, and I’m in the markets broadly. MM’s labor literally helps my bottom line. It’s a good thing MM is barred from participating in the market (on the grounds of his leftism and virtuousness) or he might accidentally “exploit” a brown person through “capitalism”.

          1. 4.2.1.2.1

            The “best” thing about it is that Malcolm is so consumed by his feelings that he cannot apply an ounce of reason and realize that his hyperbolic rants actually hurts the cause for which he rants about.

            It truly is stultifying.

  3. 3

    On remand the judge should say that he “changed his mind” and, in fact, the whole case was exceptional.

  4. 2

    So just sanction Intellectr0ll Ventur-ds and its sleazeb@ll attorneys for their sh—y behavior.

    Make it hurt. Surely that’s within the judges discretion.

    [shrugs]

  5. 1

    This Fed. Cir. reversed D.C. attorney sanction award was based solely on IV’s own expert having changed his expert opinion during cross examination to exclude bulk email after “..[t]hroughout claim construction and pretrial proceedings in the Symantec action .. [having] consistently opined that a “characteristic” is “an attribute of the document such as whether it contains a virus or is SPAM or bulk email or includes copyrighted content.”
    [If an ambiguous term like “characteristic” was a key claim element on which infringement was turning should that not have raised another issue?]
    Also, some post-trial 101 motions were granted by the D.C.

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