Clearlamp, LLC v. LKQ Corporation, 1-12-cv-02533 (ILND December 14, 2016, Order) (Lefkow, USDJ)
Friday, December 16, 2016
Plaintiff's Conduct in IPR Does Not Warrant Award of Attorney Fees in Related Lawsuit
The court denied defendant's motion for attorney fees under 35 U.S.C. § 285 after finding plaintiff's patent was invalid as obvious because plaintiff's litigation tactics were not unreasonable. "[Defendant argues] this case is exceptional because [plaintiff] unreasonably increased [defendant's] defense costs [in that plaintiff]] . . . (1) increased inter partes review costs resulting from [plaintiff's] use of three experts and a fact witness, filing a motion to amend its patent, and appealing the PTAB’s inter partes review decision to the Federal Circuit . . . [Defendant] does not demonstrate, as it must, that such conduct was unreasonable under the circumstances. [Defendant's] presentation is further unclear why (other than [plaintiff's] lack of success) it was unreasonable for [plaintiff] to seek to amend its patent -- as permitted by 35 U.S.C. § 316(d) -- or appeal the PTAB’s decision -- as permitted by 35 U.S.C. § 141(c). . . . Further, while the court denied [plaintiff's] motion for reconsideration, the tactic was not unreasonable given the unsettled state of inter partes review estoppel law. [Defendant's] arguments regarding [plaintiff's] rejection of a good-faith settlement offer is bizarre and misleading, given that both parties’ subsequent briefing indicates that the 'good-faith' settlement offer rejected by [plaintiff] was for zero dollars."