Following defendant's multiple covenants not to sue, the court dismissed plaintiff's declaratory judgment claims of invalidity and unenforceability, but retained jurisdiction to declare defendant's patents invalid in connection with plaintiff's request for attorneys' fees. The court rejected defendant's argument that attorneys' fees could not be awarded because plaintiff was not a prevailing party given the court's dismissal of its declaratory judgment claims. "Defendant has neither alleged nor provided statutory or case law support for the proposition that attorney fees pursuant to [35 U.S.C.] § 285 is inapplicable to a claim of false patent marking. . . . Thus, it would be premature and inappropriate for the Court to hold that Plaintiff, as a matter of law, cannot be a 'prevailing' party for its claim of false patent marking, especially when that claim survived a motion to dismiss."
U.S. Rubber Recycling, Inc. v. Encore International Inc., et. al., 2-09-cv-09516 (CACD January 7, 2011, Order) (Otero, J.)