Post-Alice Evolution of 35 U.S.C. § 101 Law Warrants Reconsideration of Attorney Fees Award​

The court granted plaintiff's motion to reconsider its award of attorney fees under 35 U.S.C. § 285 and reversed its order awarding fees after the PTO allowed a continuation patent with claims that were nearly identical to the patent-in-suit because it found that plaintiff's litigation positions were no longer baseless. "[T]he Court overlooked the substantive strength of Plaintiff’s litigation position because of the uncertainty of the state of the law regarding 35 U.S.C. § 101. . . . Plaintiff argues that the PTO’s allowance of nearly identical claims in this [continuation] application belies the Court’s determination it 'should have been obvious' to Plaintiff that there was no inventive concept in the [patent-in-suit]. The Court agrees. . . . while this Court had stated that it should have been obvious to Plaintiff that it did not have a § 101 case in a post-Alice environment, the law has since sufficiently evolved so that Plaintiff may have had an arguable or plausible inventive concept under § 101. That, combined with the PTO’s approval of the [continuation] application after considering this case’s § 101 materials, leads the Court to reconsider its granting of fees to Defendant under § 285."

Garfum.com Corp. v. Reflections by Ruth, 1-14-cv-05919 (NJD December 16, 2016, Order) (Simandle, USDJ)