Infringement Claim Made “Impossible” by Undisclosed License to Patent Aggregator Warrants Award of Attorneys’ Fees

The court granted defendant’s motion for attorneys’ fees under 35 U.S.C. § 285 following plaintiff’s voluntary dismissal with prejudice because plaintiff had entered into a license with a patent aggregator two months before filing suit. “[Plaintiff] forfeited its right to pursue this theory of infringement against [defendant] when it entered into the Licensing Agreement with [a patent aggregator], which provided [defendant’s software provider] with a license to the asserted patents. With [the software provider] holding a license, direct infringement by a host computer running [the provider’s] initiator software was impossible. Consequently, there could be no induced infringement claim against [defendant] in this system. . . . It then took [plaintiff] eighteen months to disclose the existence of the Licensing Agreement to [defendant]. . . . These facts alone . . . support a finding that the case ‘stands out from others’ and is exceptional under § 285.”

Summit Data Systems LLC v. EMC Corporation, et al, 1-10-cv-00749 (DED September 25, 2014, Order) (Sleet, J.)