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."

Clearlamp, LLC v. LKQ Corporation, 1-12-cv-02533 (ILND December 14, 2016, Order) (Lefkow, USDJ)

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