TNS Media Research, LLC, et al v. TRA Global, Inc., 1-11-cv-04039 (NYSD November 4, 2014, Order) (Scheindlin, J.)
Thursday, November 6, 2014
Frivolous Claim Construction Argument Justifies Award of Attorneys’ Fees Even If Nondispositive
Following summary judgment on defendant's patent counterclaims, the court granted plaintiff's motion for attorneys’ fees under 35 U.S.C. § 285. "[T]he 'totality of the circumstances' dictates that [defendant] acted in an 'exceptional' manner throughout this litigation. In one instance, [defendant] even ignored an express warning from the Court not to take certain action — otherwise sanctions would follow — and [defendant] nevertheless proceeded. . . . [Defendant] also deserves to be sanctioned for proposing a construction of [a term] that the Court later held 'render[ed] meaningless the amendments [defendant] added after the [PTO] rejected the original versions of the claim language.'. . . . [Defendant] argues that its proposed construction cannot form the basis for an award of attorneys’ fees. However, a finding of frivolity does not depend on whether the issue ultimately disposed of the case or motion. Rather, frivolity can exist in isolation. Parties cannot litigate a case by presenting multiple alternative arguments, some of which lack merit, then later take shelter under the meritorious ones when facing a motion for attorneys’ fees."