Attorneys’ Fees Awarded for Misrepresentation of Terminal Disclaimer and Other Litigation Mistakes

Following summary judgment of invalidity, the court granted defendant's motion for attorneys’ fees and non-taxable costs under 35 U.S.C § 285 because of plaintiff' litigation tactics. "[Plaintiff's counsel] blindly adopted and filed a complaint drafted (but not filed) by another firm, . . . misrepresented that a terminal disclaimer had been filed when no such terminal disclaimer existed, demanded $977.3 million in reasonable royalties, ignored [defendant's] repeated warnings about . . . obviousness-type double patenting, . . . waited nearly a year into the lawsuit to finally admit that no terminal disclaimer had been filed, and sandbagged [defendant] at the tutorial by introducing a new, untimely 'distinction' based on phrases not appearing in the asserted patent. . . . [Plaintiff's] validity position was unsupported by the record, especially given that no terminal disclaimer was ever filed (a fact it should have known before the lawsuit was filed) and its expert witness only opined that the asserted claim was 'different and broader' than the claims in the earlier [patent]. . . . Considering the totality of circumstances, this order finds that this action was litigated in a wholly unreasonable manner and it stands out from the others with respect to the substantive strength of [plaintiff's] litigation position. This is an exceptional case."

Logic Devices Incorporated v. Apple, Inc., 3-13-cv-02943 (CAND December 4, 2014, Order) (Alsup, J.)