Preservation of Appellate Record Justifies Failure to Concede Following Unfavorable Claim Construction

Following summary judgment of noninfringement, the court denied defendant's motion for attorneys’ fees under 35 U.S.C. § 285. The court rejected defendant's argument that plaintiff should have conceded infringement following claim construction because such a concession would have affected plaintiff's appellate rights. "To hold that [plaintiff] had to give up its infringement suit after claim construction and prior to the trial court’s adjudication of the infringement claim would put future plaintiffs in an untenable position. Early claim construction, performed separately from summary judgment, is a common practice in patent cases. These claim constructions, issued separately from other motions, do not analyze issues of infringement or validity. Without such an analysis, an appellate court cannot properly exercise its appellate jurisdiction. An adverse claim construction issued apart from a case-dispositive motion would therefore put future plaintiffs at the mercy of defendants — plaintiffs would be unable to pursue a case-dispositive order and therefore a suitable record for appeal without risking an award of attorney fees."

Kaneka Corporation v. Zhejiang Medicine Co., Ltd. et al, 2-11-cv-02389 (CACD May 23, 2014, Order) (Pfaelzer, J.)